Small Claims IP Litigation in Birmingham

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Jane Lambert

One of the most interesting announcements of the new Intellectual Property Enterprise Court Guide is the decision to appoint from October 2019 district judges to hear small intellectual property claims in Birmingham (see The New IPEC Guide 4 July 2019 NIPC News).

The cases that those district judges will be entitled to hear pursuant to CPR 63.27 will be claims for £10,000 or less for the infringement of intellectual property rights other than patents, registered and registered Community designs, semiconductor topographies and plant varieties. In Small IP Claims, I gave examples of cases that might be suitable for the small claims track and of others that would not.  The claimant must ask for the claim to be allocated to the small claims track in its particulars of claim and no objection should be raised by the defendant.   However, even if a case falls within the jurisdiction of the small claims track and the parties want it to stay there, the court may transfer it to the multitrack if it is likely to take more than a day to try or there is a difficult point of law or factual issue to decide.

Proceedings in the small claims track are governed by CPR Part 27 and the Part 27 Practice Direction as modified by CPR 63.27 and CPR 63.28 and paragraph 63.32 of the Part 63 Practice Direction.  Though successful claimants can obtain final injunctions and orders for delivery up of infringing materials as well as damages or accountable profits they cannot claim interim injunctions.  Liability and the amount of any damages or other pecuniary relief to be awarded are decided at the same time.  Directions are given automatically in accordance with Appendix B or C of the Part 27 Practice Direction after statements of case are exchanged and although the court has power under CPR 27.6 to hold preliminary hearings these are the exception rather than the rule. There is no provision for disclosure and the costs that may be recovered from an unsuccessful party are limited to court fees, £260 if an injunction is sought and a lawyer has been instructed, travelling expenses and loss of earnings up to £95 per witness and up to £750 in experts' fees.

The new IPEC guide indicates that those wishing to bring an IP case in the small claims track in Birmingham should use the electronic filing system.

Anyone wishing to discuss this article or small claims track IP litigation generally should call me on 020 7404 5252 or send me a message through my contact page.

SME2017 - 3 and 4 Oct

Jane Lambert

The Coventry and Warwick Local Enterprise Growth Hub's SME2017 opens at the National Exhibition Centre at 09:00 today and runs until 16:00 tomorrow. It is billed as "the Midlands biggest exhibition for SMEs", There is a massive exhibition and there are two days of seminars with talks on finance, funding, innovation, IT, marketing and outsourcing. Tickets are free and may be ordered through the event's website.

The Intellectual Property Office will be at the show and one of the speakers will be Gary Townley. He will speak in the Innovation Platform Theatre from 15:00 to 16:00 today.  You will find a summary of his talk by clicking the "Innovation Theatre" tab on the "Seminars" page of the SME2017 website. Gary will be followed on the platform by Mark Houghton of Patent Outsourcing Ltd. of Bakewell who will speak from 16:00 to 17:00. You will find a summary of Mark's talk immediately below Gary's.

Between them, Gary and Mark should give you a good introduction to intellectual property and how it can be used to protect your investment in branding, design, technology or creativity. There is, of course, a limit to what they can cover in two hours.  If you require further information locally, you can visit the Business and IP Centre at the Library of Birmingham where you will find more resources online and in print as well as talks and clinics with patent and trade mark attorneys.  If it is hard for you to get to Birmingham there are other Business and IP Centres in Exeter, Hull, Leeds, Liverpool, London, Manchester, Newcastle, Northampton, Norwich and Sheffield and Patent Information Units in the rest of the UK.

You will also find information about IP and technology law in the West Midlands in this blog.  This blog is connected to NIPC Law which contains in-depth articles on IP and technology law, NIPC Branding with articles on trade marks, domain names, geographical indications and passing off for entrepreneurs and their investors, NIPC Inventors Club with information on patenting, trade secrets and starting a new business for inventors and entrepreneurs and other regional blogs covering developments in the East of England, East Midlands, London, North West, Severn Estuary, South East and Yorkshire. There are also features on the Midlands Engine, Northern Powerhouse, the Brexit negotiations and all sorts of other special topics.

If you want to discuss this article or IP generally, call me on 020 7404 5252 during office hours or send me a message through my contact form.

Welcome to NIPC West Midlands

Jane Lambert

This is a blog for creators and innovators and entrepreneurs and investors in the West Midlands. Creators - artists, authors, composers, designers and performers, writers - and innovators - inventors and those who apply existing technology in a new way -make the products, processes and services upon which society depends. Entrepreneurs make them available to us and investors put up the money to make it all possible.

All of them depends ultimately on intellectual property - the bundle of rights that protect investment in innovation and creativity. Such rights are not easily obtained and are frequently challenged because they confer monopolies and exclusivity. Because they are not easy to get, enforce or maintain, many of the businesses that need those rights most fail to take advantage of them.

That is unfortunate because preserving the competitive advantage that innovation or creativity confers has a lot to do with the success of an economy.  In Europe, we have only to look at Germany whose inventors and businesses applied for 25,086 European patents in 2916 compared to 5,142 for ours in the UK. Even Switzerland with one-eighth of our population managed 7,293 applications. Overseas, China, Japan, South Korea and the USA applied for more European patents than we did and many times more than still in their own home patent offices.

The big difference between Germany and other continental countries and us is that the Mittelstand - roughly what we would call SME (small and medium enterprises) - are much more likely to patent their inventions, trade mark their brands and register their designs. The main reason for that is that it was considerably cheaper and easier to enforce intellectual property rights in those countries than here. As I said in "Litigation Costs in England and Continental Countries" in Dispute Resolution it is still true for big ticket litigation in the Patents Court but the authorities have been trying to do something about the differentials in costs.

First came Intellectual Property Office opinions in 2004. These are authoritative opinions by patent examiners on whether a patent is valid or whether it has been infringed which cost £200. I was present at a consultation at the IPO in 2003 which was attended by the Comptroller and Sir Robin Jacob who was then a judge of the Patents Court and the presiding Chancery judge in Birmingham when the idea for this service was first mooted. I also arranged a workshop in Leeds in 2005 with IP insurers when we explored how they could make it easier for IP owners to get after-the-event insurance.

Next came the IPO's mediation service for which again I arranged a conference with the IPO and World Intellectual Property Organization. I am a member of the WIPO's panel of neutrals and also one of the external mediators on the IPO's list of mediation providers. I have a lot of experience of alternative dispute resolution both as a neutral and as counsel.

Finally, time limits and cost caps were introduced for the Intellectual Property Enterprise Court ("IPEC") together with a small claims track which brought most IP litigation costs in this country more or less in line with those on the continent. Also, by pressing ahead with ratification of the UPC Agreement the government is doing all it can to reduce the costs of big ticket patent litigation by advancing the Unified Patent Court and unitary patent despite Brexit.

There has been some increase in demand for IPO opinions and the use of IPEC but not a commensurate increased in the number of patents that are sought by British inventors. When I have tried to find out why businesses have not made more use of the IP system I am told that "IP is for big businesses and not for the likes of us." That is just not the way their German, American, Korean, Japanese or Chinese counterparts would think.

The problem is one of perception and that is where this blog comes in.  There are a lot of services in the West Midlands that are either free or reasonably priced.  There are, for example, free IP clinics at the Library of Birmingham between 17:00 and 18:30 every Monday evening.  All you need to do is call 021 303 6800 or email businessandlearning@birmingham.gov.uk to book a slot. The Library can also help you with many other services including workshops, seminars and introductions. If you want to stop someone from selling knock offs of your products or using a brand that is similar to yours you can now bring a claim virtually risk-free for a few hundred pounds in the IPEC small claims track, There is also low-cost IP insurance and services like Legal Cost Finance that let you spread the cost of first class advice and representation.

Although I now live in Yorkshire I have a lot of connections with the West Midlands. I was born in a clinic in Manchester but my parents brought me home to Much Wenlock where they were then living. My first school was in Lichfield and when I came to the Bar I spent a lot of time in the Walsall, Wolverhampton and Birmingham County Courts. I was in one of the first Chancery cases in Birmingham after it got Chancery jurisdiction. I have many clients in the region both big and small.

If you want to discuss this article or any other matter relating to IP or related areas of law, call me on 020 7404 5252 during office hours or send me a message on my contact form.