Reforming the Patents County Court

The Patents County Court (PCC) as opposed to the Patents High Court, was set up to provide a simpler alternative to the expensive Patents High Court route for individuals and small to medium businesses (SMEs) to pursue lower cost claims of infringement and invalidity in relation to intellectual property (patents, designs, trademarks and copyright). It is widely considered that this has failed.

To date, the PCC has had the same costs and jurisdiction as the High Court, making it just as expensive to bring an action. When first setting up the Patents County Court in 1990 under s287(1) of the Copyright, Designs and Patents Act 1988, it was intended that costs should be reduced by chartered British Patent Attorneys being able to represent their clients at the Patents County Court. However, due to there being no restriction on the recovery of costs from the losing side, this has not been the case.

The proposed reforms to the PCC aimed to make it a more modern, speedier and slicker tribunal for dealing with intellectual property (“IP”) disputes of lower complexity. In brief, some of the changes proposed were to have strict case management timetables, to provide more a more streamlined approach for patent cases, to have an expert IP judge hearing the case, and very importantly to have a limit of the recovery of costs.

In October 2010, the changes to the Patents County Court, impacting all IP disputes, were final announced. These significant changes include:

• a trial period of one to two days providing individuals and SMEs certainty in terms of court time;
• a limit on the recovery of costs: maximum amounts of scale costs which the court will award for each stage of a claim in the PCC: up to the determination of liability, and in an inquiry as to damages or account of profits;
• clear guidelines as to how and when a case may be transferred between the PCC and the High Court, thereby limiting the opportunity for a more financially well-off party in the dispute from using the option to transfer as a tactic to gain an upper hand in terms of cost implications;
• requiring parties to submit all facts and arguments in their Statement of Case at the beginning, with the intention that some cases may be decided on the facts and arguments alone;
• requiring parties to strictly follow the pre-action timetable, so that submissions are made in a timely matter and do not unnecessarily drag on leading to uncertainty for one or other of the parties.

A new PCC judge, HHJ Birss, QC, has also been appointed to oversee the new regime. HHJ Birss is a young and well respected QC, and it is hoped that he will involve himself fully in the PCC.

Overall, the Patents County Court is now more streamlined and it should be far easier for smaller business and individuals to litigate lower value and less complex cases, whilst limiting exposure to costs and providing more certainty in terms of the time that it will take to conclude matters.