Wednesday, 17 December 2014

Representing yourself in Intellectual Property cases

Jane Lambert

Since the Access to Justice Act 1999 came into force more and more people have had to go to court without a lawyer.  Those who represent themselves in court are known as "litigants in person". The following guides have been produced for such  persons:  A Handbook for Litigants in Person published by the Judicial Studies Board and A Guide to Representing Yourself in Court ("the Guide") by the Bar Council.

Intellectual Property
Those guides are very useful and should be read by litigants in person in any type of case. However, they do not cover intellectual property ("IP") proceedings which is a pity because IP has rules and practices that differ from other types of dispute resolution. The purpose of this article is to supplement both publications and, in particular, the Guide. This article covers intellectual property proceedings in the civil courts and Intellectual Property Office ("IPO") tribunals. It does not cover proceedings in the European Patent Office ("EPO") or the Office for Harmonization in the Internal Market ("OHIM").

How to use this Article
Use this article in conjunction with the Guide. When I mention sections and paragraph I am referring to sections and paragraphs in the Guide. Treat this article as though it were an addendum to Section 4.  The disclaimer on the inside cover which is headed "Disclosure" (probably a misprint) applies equally to this article.

Section 1: How to find free or affordable help with your legal problem

Free legal advice and representation
Specialist legal advice on IP can be obtained from IP clinics run by the Chartered Institute of Patent Attorneys ("CIPA") and other bodies. Our chambers have run monthly clinics in London in conjunction with Middlesex University which we hope to resume in the New Year. We also run a regular clinic on the second Tuesday of every month in Barnsley. If you want to attend one of our clinics call George Scanlan on 020 7404 5252 during regular office hours or use our contact form. For more information on basic advice and information on IP in South East England, please read "Where to get free basic Information on Intellectual Property" 18 Dec 2014.

Paying for legal services
It is unlikely that any household policy will cover advice on IP. In fact, most legal indemnity policies for businesses specifically exclude IP. If you want cover against the costs of enforcing your own IP rights or resisting a claim against you for the revocation or invalidation of your own IP rights or the infringement of a third party's you will need special before-the-event IP insurance. There are only a handful of specialist brokers who provide such cover and I have listed some of them in IP Insurance Five Years On 23 Oct 2010 Inventors' Club blog and Intellectual Property Litigation - the Funding Options 10 Apr 2013 NIPC Law. Professional opinion does differ on the value of IP insurance but in my view it is well worth it.

Who can provide legal advice and representation?
In addition to barristers, solicitors and legal executives mentioned in the Guide, you can also consult patent attorneys (also known as "patent agents") and trade mark attorneys (also known as "trade mark agents"). For more information read my articles IP Professionals - who does what 5 Sept 2013 IP London and IP Services from Barristers 6 Apr 2013 4-5 IP. If you consult a barrister or a solicitor make sure that he or she is a specialist in IP or technology law for not all of them are. Most specialist counsel are members of the IP Bar Association and many specialist law firms are members of the IP Lawyers Association. If you want to sort out the IP sheep from the goats read How to spot an IP blagger at 30 paces 23 Feb 2009 IP North West.

If you can, settle outside court
There are three specialist alternative dispute resolution services ("ADR") for IP disputes of which you should be aware:
  • IPO opinions on patents and registered and unregistered design rights;
  • IPO's mediation service for IP disputes; and
  • the Uniform Domain Name Dispute Resolution Policy for generic top level domain names and equivalent services for country code top level domain name disputes such as Nominet's Dispute Resolution Service for .uk domains.
You may find the following articles useful:
Is ‘no win, no fee’ right for you?
It will be very difficult if not impossible for you to find a lawyer who is prepared to take an IP case on a "no win no fee" retainer. There are several reasons for that which I explained in Intellectual Property Litigation - the Funding Options 10 Apr 2013 NIPC Law and No Win No Fee 14 Jul 2011 NIPC website. Read my case notes on Henderson v All Around the World Recordings Ltd (Success Fees and ATE Premiums in the Patents County Court: Henderson v All Around the World Recordings Ltd 4 May 2013 NIPC Law and Inquiries as to Damages in the Intellectual Property Enterprise Court: Henderson v All Around the World Recordings Ltd. 5 Nov 2014 to see what can go wrong.

Section 2, Part 2: Starting and defending a claim

‘Letter before claim’
It is very important to send a letter before claim in any type of action unless there is a good reason why you should not but it is particularly important for proceedings in the multitrack and small claims track of the Intellectual Property Enterprise Court ("IPEC") because CPR 63.20 (2) requires you to state in your particulars of claim whether you have complied with paragraph 7.1 (1) and Annex A (paragraph 2) of the Practice Direction (Pre-Action Conduct). If you fail to do so the defendant has up to 70 days to file a defence under CPR 63.22 (3).

In addition to the Practice Direction - Pre-Action Conduct you will find the Code of Practice for Pre-action Conduct in Intellectual Property Disputes useful for completing your letter before claim.

One of the special features of intellectual property litigation is that you can be sued for threatening to sue for patent, registered and Community design, registered and Community trade mark and unregistered design right infringement without justification. You must therefore be very careful how you write your letter before claim.

You should remember this rule if you are threatened with patent, registered or unregistered design or trade mark infringement by a third party. Remember that the claim can lie not just against the party making the threats but also against its solicitor, patent or trade mark attorney. For more information see my article Threats Action Updates 26 Jan 2006 NIPC Law.

This is one of the occasions when it would be prudent to seek specialist advice from a barrister or solicitor specializing in IP or a patent or trade mark attorney.

Starting a claim – which court?
Some IP claims must be brought in the civil courts. Others must be brought in the IPO. Some can be brought in either. 

Claims for the infringement of most IP rights, breach of confidence, passing off and actions for groundless threats must be brought in court.

Claims to determine who is entitled to a patent or patent application, licences and supplementary protection certificates have to be brought in the IPO. So, too, do trade mark oppositions.

Claims for revocation and amendment of patents and declarations of non-infringement and counterclaims for invalidation of trade marks and registered designs can be brought in either the courts or the IPO.

Courts that hear IP cases
IP cases must be heard in the Chancery Division of the High Court of Justice or one of the county courts that is attached to a Chancery District Registry (that is to say, the Manchester, Liverpool, Leeds, Preston, Newcastle, Birmingham, Bristol, Cardiff, Caernarfon and Mold county courts). 

Within the Chancery Division there are two specialist courts, namely the Patents Court and the IPEC. IPEC has a small claims track for claims up to £10,000. The Chancery Division sits in London, Manchester, Liverpool, Leeds, Preston, Newcastle, Birmingham, Bristol, Cardiff, Caernarfon and Mold.  

For more information on practice in the Chancery Division see the latest Chancery Guide

Patent, Registered Designs, Semiconductor Topographies and Plant Breeders' Rights
Claims for patent, registered or registered Community design, semiconductor topography and plant breeders' rights infringement have to be brought in the Patents Court or IPEC. If the claim is for  £500,000 or less and can be tried in no more than 2 days the case can be brought in IPEC. Otherwise it must be brought in the Patents Court. See the Patents Court Guide for more information on the Patents Court and the Intellectual Property Enterprise Court Guide for more information on IPEC. My article New Patents County Court Rules 31 Oct 2010 NIPC Law may still be useful.

Other IP Claims
All other IP claims can be brought in IPEC, the Chancery Division and the Manchester, Liverpool, Leeds, Preston, Newcastle, Birmingham, Bristol, Cardiff, Caernarfon and Mold county courts. As with patents, if the claim is for £500,000 or less and the trial can be heard in not more than 2 days it can be brought in IPEC. The procedure in IPEC differs from that of the rest of the Chancery Division and costs are capped at £50,000 for trials and £25,000 for accounts of profits and inquiries as to damages.  

IP claims other than patent, registered or registered Community designs, semiconductor topography or plant breeders' rights under £10,000 can be brought in the small claims track of IPEC. Recoverable costs in the small claims track are limited to just a few hundred pounds. For more information on the small claims track, see the Guide to the Intellectual Property Enterprise Court Small Claims Track and my article How to take proceedings in the IPEC Small Claims Track 12 July 2014.

IPO Tribunals
There are separate tribunals within the IPO for patent, registered design and trade mark proceedings. Cases are decided by officials known as "hearing officers" who are addressed as "sir" or "madam" as the case may be. Costs are usually awarded on a scale annexed to Tribunal Practice Notice 2/2000 unless a party has behaved badly in which case a hearing officer may award costs off the scale.

European Patents
Claims relating to European patent applications and oppositions to European patents must be brought in the EPO. 

Community Trade Marks and Designs
Oppositions to Community trade marks have to proceed in OHIM while claims for the invalidation or revocation of Community trade marks can be brought in OHIM or Community trade mark courts which include the Chancery Division and chancery county courts. Similarly, applications for the invalidation of registered Community designs can be brought in OHIM or Community design courts including the Patents Court and IPEC.

In  many cases an IP owner requires an injunction to restrain an infringement between the issue of proceedings and trial. Such injunctions are known as "interim injunctions" to distinguish them from injunctions after trial which are known as "perpetual injunctions". Applications for interim injunctions are determined by a Chancery interim applications judge. For more information on interim injunction applications see Litigation choices - should I apply for an interim injunction or should I not? 29 Oct 2014 IP East and the Judiciary's Interim Applications in the Chancery Division: A Guide for Litigants in Person.

Further Information
ff you wat to discuss this subject further, give me a ring on 020 7404 5252 during office hours or message me through my contact form.