30/09/10

By Claire West

Imminent changes to the procedures that apply in the Patents County Court will encourage small and medium-sized businesses to rethink their view of IP protection, according to experts at Withers & Rogers LLP.

The Civil Procedure Rules which govern civil litigation in England and Wales are being amended with effect from 1st October 2010 as part of a move to make it cheaper and easier for small and medium-sized businesses to enforce their IP rights. The changes are being introduced following publication of Lord Jackson’s review of the cost of litigation last year, which concluded that it was too expensive and not accessible to SMEs.

Nick Wallin, patent attorney at Withers & Rogers LLP, said:

“The current system is not conducive to encouraging small and medium-sized businesses to defend their IP rights — it is just too expensive and the costs involved in bringing an enforcement action, combined with the legal costs due if they fail, mean it is rarely considered a risk worth taking.

“The rule changes will make it far easier and cheaper for SMEs to access justice and we expect this to lead to an increase in IP-related litigation and encourage more businesses to protect their IP.”

Specifically, the new procedures require the claimant to give much more information about the case they are bringing up front. This information should include details of the argument they will be making and a summary of evidence, including signed expert evidence if required. This will enable the court to reach a decision more swiftly.

The changes include a cap on the costs recoverable set at £50K and a further cap on the amount of damages that can be awarded (£500K), although the latter will not be introduced until April 2011.

Nick Wallin concludes:

“The new rules will give businesses a clear choice about how to defend their IP rights. The High Court will be used for larger claims, valued at over £500K whereas the Patents County Court will provide a low-cost route for businesses bringing lower cost claims.

“This is as it should be and was indeed the thinking behind the founding of the Patents County Court in the late 1980s.”