Thursday, 9 February 2017

Small IP Claims Update

 
Royal Courts of Justice
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Jane Lambert

It is not often that one receives an accolade from a client. Usually, if a client wins, it is down to the natural justice of the case and nothing to do with the eloquence or preparation of the advocate. If the client loses, it's all the lawyer's fault.

So it was lovely to receive thanks from a public access client earlier this week whose case in the small IP claims track has just been resolved to his satisfaction. The client said that it actually took him a very long time to find someone who truly understands IP the way I do, especially in relation to e-commerce and added that there is certainly a market there for me to tackle.

Although the case was in the small claims track it was not an easy one.  Had the claim not settled a novel point of law would have to have been decided and there were also procedural issues that required several preliminary hearings.

Before 2010 claims like this would have been brought in the Chancery Division of the High Court of Justice where the costs on each side would have run into thousands.  Since 2012 it has been possible to run most IP claims where the primary relief sought is an injunction in the small claims track of the Intellectual Property Enterprise Court ("IPEC").  As I said in There's Nothing Small About the Small IP Claims Track 3 Feb 2017 Linkedin, the legal issues in the small claims track can be just as complex as those in the multitrack but the procedure is much simpler and the costs correspondingly lower.

I have updated my Small IP Claims page with two new articles:
Should anyone wish to discuss this article or IP enforcement in general, call me on 020 7404 5252 during office hours or send me a message through my contact form.

Tuesday, 7 February 2017

Five Pernicious Intellectual Property Myths















Jane Lambert

In this article, I am challenging the following myths that are probably responsible for our trailing many of our competitors in the number of patent, design and trade mark applications.

Myth #1  There's no point in acquiring an intellectual property right because you can never afford to enforce it.

It is probably still the case that England and Wales (and indeed Scotland and Northern Ireland) are among the most expensive countries in the world to bring a full blown patent action.  That is because our legal system provides for close investigation of the evidence and full consideration of the arguments which tends to assure the most just outcome.

But most IP cases do not require that degree of scrutiny. For the last 6 ½ years the Intellectual Property Enterprise Court (formerly the Patents County Court) has provided a high-quality dispute resolution service where the issues are defined in advance, trials are limited to two days and recoverable costs are capped at £50,000  (see Jane Lambert New Patents County Court Rules 31 Oct 2010).

Since 1 Oct 2012, there has been a small IP claims track that covers claims for injunctions and damages limited to £10,000 where the recoverable costs are limited to just a few hundred pounds (see Small IP Claims).

Now every solvent business should be able to afford to bring or defend a small IP claim and most can afford some kind of IP insurance (see IP Insurance: CIPA's Paper 1 May 2016 Inventors' Club).

Myth #2  Don't bother with IP because they will only take it away from you if you try to enforce it.

This is usually a cry of despair when an IP owner realizes that IP law does not exist solely for his or other owners' benefit.

Intellectual property law balances three public interests:
  • incentivizing innovation and creativity,
  • promoting competition between suppliers, and
  • safeguarding consumers' choice.
By its nature, an IPR is a restriction of competition and customer choice which is granted only where it is earned and deserved. That is why we have continued scrutiny of registered rights after grant particularly during infringement proceedings which occasionally results in the revocation or invalidity of the grant.

However, inventions, brands and designs that truly merit legal protection will always get it.

Myth #3  Why go to court to enforce your IPR? You can rely on the CPS or trading standards to do it for you.

Some IP infringements are offences but not all or even most of them. Most notably, it is not a crime to infringe a patent in this country. Also, prosecuting authorities do have other priorities.  Primary responsibility for enforcing an IPR rests with IP owners and the usual way in which they enforce their rights is by taking action against infringers in the civil courts.

Myth #4   Why take out IP insurance? You can always find a lawyer to take up your case on a "no win no fee" arrangement.

Increasingly unlikely since the Legal Aid, Sentencing and Punishment of Offenders Act 2012 has abolished recovery of success fees and after-the-event insurance premiums (see Jane Lambert Intellectual Property Litigation - the Funding Options 10 April 2013). From an IP lawyer's point of view, conditional fee and damages based agreements do not make any kind of sense. 

Myth #5   Why pay for a patent, trade mark or registered design when you can rely on trade secrecy, passing off or design rights to protect you for free?

Different intellectual property rights do different things. 

There is often some overlap between say passing off and trade marks and registered and unregistered designs but one right does not substitute for the other.

Patents and trade secrets are diametric opposites. You get a patent by telling the world how to make or use your invention. You keep a trade secret by staying stum and rely on the law of confidence to make others who are in the know to do the same.  Sometimes trade secrecy can be very effective. The recipe for Coca-Cola has been kept secret for over a century and that for Chartreuse for many centuries, The problem is that the obligation of confidence disappears once the trade secret is generally known. That can happen through parallel research or even reverse engineering.

You always consider the full IP toolbox when devising your IP strategy and choose the rights that are most effective for your business and fit your budget.

If you wish to discuss this article, call me on  020 7404 5252 during office hours or message me through my contact form.

Thursday, 2 February 2017

The Duty to Consider ADR

Jane Lambert











"Litigation should be a last resort" begins para 8 of Practice Direction - Pre-Action Conduct and Protocols which both sides to a dispute are required to follow. The paragraph continues:
"As part of a relevant pre-action protocol or this Practice Direction, the parties should consider whether negotiation or some other form of ADR might enable them to settle their dispute without commencing proceedings."
The obligation to consider ways of settling a dispute is not a once-and-for-all step but continues even after a claim form has been issued.

What Paragraph 8 means in Practice

When I read that paragraph to clients they often have three questions:
  1. What is meant by "ADR"?
  2. How do I get some of this ADR? and
  3. What happens if I don't consider ADR?
What is meant by ADR?

"ADR" stands for "alternative dispute resolution" which is defined in the Glossary to the Civil Procedure Rules as
"Collective description of methods of resolving disputes otherwise than through the normal trial process."
Para. 10 of the Practice Direction suggests 4 types of ADR, namely:
"(a) mediation, a third party facilitating a resolution;
(b) arbitration, a third party deciding the dispute;
(c) early neutral evaluation, a third party giving an informed opinion on the dispute; and
(d) Ombudsmen schemes."
The last of these is not really relevant to most intellectual property ("IP") or TMT ("technology, media and telecommunications") disputes so I will concentrate on the first three. I have experience of all three kinds of alternative dispute resolution both as an advocate and legal advisor and as a dispute resolution service provider as I sit on the WIPO (the UN Agency for Intellectual Property) panel of neutrals and I am listed on the Intellectual Property Office's Mediation Providers.

How do I get some of this ADR?

I discussed some of the types of ADR that are available for the resolution of IP disputes in Intellectual Property Dispute Resolution in the UK 30 Jan 2017.  In that article I mentioned two ADR services that are tailor made for IP and TMT disputes, namely patent examiners' opinions from the Intellectual Property Office on patent issues and the Uniform Domain Name Dispute Resolution Policy for generic top level domain name disputes (ie ".com", ".net" and ",org" disputes) and similar schemes for ".uk" and ".eu" domain name disputes, In IP Mediation 22 May 2015 I considered the mediation services that are specifically designed for IP disputes and in IP Arbitration 3 Dec 2015 I wrote about the specialist arbitration services.

What happens if I don't consider ADR?

The short answer is that you could waste a lot of time and lose a lot of money.  The Ministry of Justice website lists a number of standard case management directions which are routinely given in the multitrack. The second of those directions provides:
"At all stages the parties must consider settling this litigation by any means of Alternative Dispute Resolution (including Mediation); any party not engaging in any such means proposed by another must serve a witness statement giving reasons within 21 days of that proposal; such witness statement must not be shown to the trial judge until questions of costs arise."
These directions are proceeded by a general warning in bold type at the top of the order:
"Warning: you must comply with the terms imposed upon you by this order otherwise your case is liable to be struck out or some other sanction imposed. If you cannot comply you are expected to make formal application to the court before any deadline imposed upon you expires."
So the courts are serious. That warning is reinforced in terms by para 14 (c) of the Practice Direction:
"14. The court may decide that there has been a failure of compliance when a party has—
........................................
(c) unreasonably refused to use a form of ADR, or failed to respond at all to an invitation to do so."
Para 15 sets out some of the things that the court can do such as remove any restraints that may have been imposed on your opponent, delay your action indefinitely or penalize you with sanctions. Those sanctions can include making you pay extra costs or interest if you lose the action or disallowing some or all of your costs or making you pay the other side's even if you win.

But the main disincentive for not considering ADR is that the dispute could continue a lot longer and cost a lot more money than it might have done, Queen Mary College's report on Pre-empting and Resolving Technology, Media and Telecoms Disputes, International Dispute Resolution Surveywhich can be downloaded from the WIPO's website, highlights the advantages of arbitration and mediation as perceived by some of the world's biggest companies.  Those companies forecast that more disputes will be referred to ADR and fewer will be resolved by the courts over the next few years.

How can I help you?

When I have explained all this to a client whether he or she is a potential claimant or someone who has been threatened with a letter before claim I am usually asked what can be done about it. The answer will depend on the circumstances.

Some cases are better suited to one form of ADR and others to another. Negotiation may be the best plan in some cases or it may be that there is an arbitration or other dispute resolution agreement between the parties. Whatever the situation, I can advise on the next step.

It may be appropriate to suggest a form of ADR in a letter before claim or response which I am often instructed to draft. I can represent a client in party-to-party negotiations or mediation. If there is an agreement I can draft or help draft the terms of settlement.  If no agreement is reached I can advise on the next step.

If the parties agree to arbitrate, I can draft an arbitration agreement or notice under an existing agreement, statements of case, skeleton arguments and other documents. If there is an oral hearing I can appear for you before the arbitrator. If you win I can advise you on, and assist you with, enforcement. If you lose, I can advise you on whether, and if so how, you can challenge the arbitrator's award.

Further Information

Should you wish to discuss this article or if you have an IP or TMT dispute upon which you need advice, call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

Monday, 30 January 2017

Intellectual Property Dispute Resolution in the UK

Jane Lambert











First Published 2 Nov 2011 JD Supra, Revised 30 Jan 2017

Essentially, there are two ways of resolving any kind of dispute:
  • the parties can agree to settle; or 
  • a third party, such as a judge, arbitrator or hearing officer, imposes a settlement on them. 
They are not mutually exclusive. Some issues in a dispute may be settled by one method while other issues may be settled by another.

Agreed Settlement

There are two routes to an agreed settlement:
  • Direct negotiation between the parties; or
  • Mediation, that is to say, negotiation facilitated by a third party known as “a mediator”.
There are also two negotiation strategies, namely positional and principled negotiation. Mediation developed out of principled negotiation.

Direct Negotiation

Positional Negotiation:  The parties bargain. One side begins by demanding more than it expects to get while the other offers less than it expects to give. In subsequent exchanges, the parties edge towards each other until they strike a deal. In the intellectual property (“IP”) context, positional negotiation often resolves money disputes such as royalties payable under a licence or the damages for infringing an IP right (“IPR”).

Principled Negotiation: In principled negotiation, the parties explore solutions that satisfy their respective interests rather than their demands. A remarkable example of a successful principled negotiation is where the parties started on opposite sides of an infringement dispute and emerged with a licence and distribution agreement that has lasted for many years.

Mediation

As it is not always easy for opponents to ascertain and understand each other’s interests, principled negotiation often needs to be facilitated by a trusted third party known as a mediator. The mediator meets each party separately to discover the factors causing and perpetuating the dispute. He or she considers those factors dispassionately and considers how they may be addressed. Often he or she can see a solution that would never have occurred to the parties. The mediator introduces that solution to each of the parties. If they both accept it outline he or she works with the parties to construct a settlement.

Mediation Services: There are many mediation services that help resolve intellectual property disputes (see the Intellectual Property Office’s list of Mediation Providers). These include services offered by the World Intellectual Property Office (“WIPO”) Arbitration and Mediation Centre, the UN specialist agency for intellectual property, the Intellectual Property Office’s own mediation service and, of course, my own.

Costs

Positional negotiation need not cost anything because it does not necessarily require representation. Principled negotiation, however, requires representation by advocates or litigators with specialist training and experience. Most lawyers and patent and trade mark agents charge or at least compute their fees by the hour. The least you can expect to pay for professional representation is £350 per hour plus VAT. Mediators charge similarly though their fees are usually shared by the parties. There are usually a few extras such as room hire, copying and refreshments.

Imposed Settlement

If a dispute cannot be settled by agreement, it may have to be referred to a third party for determination. The jurisdiction of that third party may be conferred by the state or by the parties themselves.

Jurisdiction conferred by the State 

In the UK, there are two sets of forums for the resolution of IP disputes that are established by the state in the UK, the courts and a number of administrative tribunals.

The Courts 

Court Systems:  Each part of the UK has its own court system, procedural, and, on some issues, substantive laws (see Civil Proceedings  29 Jan 2017).

In England and Wales, the High Court and County Court have civil jurisdiction. Appeals lie from the County Court to the High Court and from the High Court to the Court of Appeal. 

Northern Ireland has a courts system that is similar to that of England and Wales. 

Scotland has a court of unlimited original and appellate civil jurisdiction known as the Court of Session and a number of local courts known as Sheriffs’ Courts. 

Appeals lie from the Courts of Appeal in England and Wales and Northern Ireland in all matters and from the Court of Session in civil matters to the Supreme Court of the United Kingdom, the final court of appeal for all parts of the UK.

For so long as we remain in the EU, the Court of Justice of the European Union provides guidance to the courts of the UK on points of EU law.

Remedies

The remedies that can be awarded by the courts include:
  • Declarations: statements of a party’s legal rights or obligations; 
  • Injunctions: orders of the court to do or refrain from doing something on pain of punishment for disobedience; 
  • Delivery up: surrender of documents, infringing items or other things;
  • Damages: compensation for injury, loss or damage suffered as a result of wrongdoing; 
  • Account of Profits: computation and surrender of the profits or other benefits from wrongdoing; and
  • Costs: reimbursement of at least some of the legal fees and other expenses incurred by the successful party. 
Interim Remedies:  If one of their IPR has been infringed, most IP owners want an immediate stop to the infringement. The courts gave power to grant injunctions and other orders at any stage of an action. Such injunctions, which are known as interim injunctions, last until the trial or further order in the meantime. As the court does not know which party will win, it requires the party seeking an interim injunction to promise to compensate the other party for any loss or damage that it may suffer if that other party is ultimately successful as a condition for granting the injunction.

Search Orders and Freezing Injunctions: Two special kinds of interim injunction are particularly useful in IP litigation:
  • Search Orders: orders requiring the person in charge of a building or vehicle to admit an independent solicitor together with solicitors, computer or other expert from the applicant’s team to search for, and take away, documents, computer files and other evidence that might otherwise be destroyed or hidden; and 
  • Freezing Injunctions: orders preventing a party from transferring, hiding or dissipating assets that could satisfy a judgment. 
Venue

Claims relating to any IPR except patents, registered and registered Community designs, semiconductor topographies and plant varieties may be brought in London, Birmingham. Bristol, Caernarfon, Cardiff. Leeds, Liverpool, Manchester, Mold, Newcastle upon Tyne and Preston. Patents, registered and registered Community designs, semiconductor topographies and plant varieties must be brought before specialist judges of the High Court known as the Patents Court or of the Intellectual Property Enterprise Court (“IPEC”).

Costs

Litigation in the High Court and County Court is expensive. According to Taylor Wessing a patent claim can cost between £200,000 and £1 million. Rules adopted in October 2010 cap the costs that either party can recover from the other in IPEC at £50,000 for trials on liability and £25,000 for inquiries as to damages or accounts of profit.  Because of the cost of enforcement, IPR owners are urged to consider taking out special IP litigation insurance when they register a patent, trade mark or design.

Tribunals

IPO Tribunals

The Chief Executive of the IPO (known as the Comptroller in relation to patents and the Registrar in respect of registered designs and trade marks) has jurisdiction to hear appeals from examiners and other officials as well as disputes between members of the public relating to patents, registered and unregistered designs and trade marks. The Comptroller exercises that jurisdiction through officials known as hearing officers. Hearing officers sit at the IPO’s headquarters in Newport, its London offices or, occasionally, elsewhere. Parties and their advocates may attend hearings from anywhere by video link or telephone. Hearings tend to be short and many disputes are resolved on paper. In most cases. awards of costs are limited to a few hundred or at most thousands of pounds.

Copyright Tribunal

Panels consisting of a legally qualified chair or deputy and 2 representatives of the public decide disputes over the terms of block licences to use copyright works and other media.

Company Names Tribunal

A low-cost tribunal before IPO hearing officers to determine complaints over the registration of corporate names.

IPO Opinions

Examiners will give non-binding opinions such matters as whether a British or European patent is valid and/or whether it has been infringed for £200 (see Opinions: resolving patent disputes 19 May 2015 IPO).

Jurisdiction conferred by the Parties

It is prudent for parties to a contract to agree a procedure for resolving any dispute that may arise at the time they make their contract. It is, of course, also open to them to agree such procedures after a dispute arises though by that time agreement may be more difficult to achieve. Such procedures can include mediation, which has already been discussed, as well as arbitration or some other form of alternative dispute resolution (“ADR”).

Arbitration

This works very similarly to the courts except that the role of the judge is performed by one or more arbitrators chosen by the parties themselves or appointed under an agreed procedure. The parties can also choose their own procedural rules. The costs of arbitration are often the same as for litigation and there are also the arbitrator’s fee and the hire of the venue. The advantages of arbitration are that the arbitrator may have expertise in the subject matter of the dispute, he or she can sit at a time and in a place that is convenient to the parties and the proceedings can be kept secret.

Arbitration services are offered by members of my chambers and the WIPO Arbitration and Mediation Centre.

Domain Name Disputes

The WIPO Arbitration and Mediation Centre and several other dispute resolution services accredited by ICANN (the Internet Corporation for Assigned Names and Numbers) offer a speedy and inexpensive documents-only dispute resolution service for trade mark owners and registrants of generic top level domain names known as the “UDRP” (Uniform Domain Name Dispute Resolution Policy). The Centre also provides a similar service for several country code top level domains.

The UK domain name authority Nominet UK offers a slightly different domain name dispute resolution service for the .uk top level domain.

Further Information

If you want to discuss any point in this article or any IP dispute in which you are involved, do not hesitate to call me on +44 (0)20 7404 5252 or send me a message through my contact form.

Saturday, 28 January 2017

An English Speaking Commercial Court in the Netherlands

Amsterdam
Photo Massimo Catarinella
Source Wikipedia
Creative Commons Licence

















Jane Lambert

In Paper 2 of the Brexit papers  Access to the EU legal services market The Bar Council Brexit Working Group reminded us that "the UK legal services market is a significant revenue generator for the Exchequer, worth £25.7 billion in total, employing approximately 370,000 people. Much of its work comes from overseas:
"In 2015, of the 1,100 cases registered at the Commercial Court, more than two-thirds had one non-UK based party to proceedings."
That would probably be true of the Patents Court where the world's leading pharmaceutical and consumer electronics companies settle their disputes and to a large extent the Intellectual Property Enterprise Court. Net exports of legal services generated an estimated £3.3 billion in 2015.

Even though it is more expensive to litigate in common law countries than in most civil law jurisdictions businesses still come to London because proceedings are in English and the UK is in the European Union which facilitates the enforcement of judgments and allows lawyers from other member states to practise here and British lawyers to practise in other member states.  Brexit threatens the second of those advantages as Paper 2 points out, but a new English speaking commercial court in the Netherlands appears to be about to challenge the first.

According to Eelco Meerdink, a partner of DeBrauw Blackstone Westbroek in Amsterdam, "uncertainty created by the UK’s vote to leave the EU has left European legal firms and financial institutions considering homes in other parts of mainland Europe" (see English language in Dutch courts 1 Dec 2016 LexisPSL). There is already a website for the Netherlands Commercial Court. Its home page states:
"Amsterdam will soon be joining the likes of London, Dubai and Singapore when the new Netherlands Commercial Court opens its doors.
This court shall be specialised in hearing complex (international) commercial cases.
The Netherlands Commercial Court will offer parties to business and trade disputes a forum where they can litigate in English before neutral, specialist commercial judges, right in the heart of Europe."
Unlike the new English language courts in the United Arab Emirates and Qatar which I track in NIPC Gulf the procedural and substantive law of the Amsterdam court will be Dutch and, apparently, so will the judges.

The use of Dutch law by the Dutch judiciary is cited as one of the advantages of the new court:
"The court will provide an alternative to parties who want to litigate in English, but wish to avoid expensive forums such as London or the United States."
Those procedural advantages include the preliminary injunctive relief that is available including the extra-territorial injunctions that are granted frequently by Dutch judges.

I will follow these developments closely and report on them from time to time.  At present, I enjoy rights to practise in other member states including the Netherlands under the Lawyers Services Directive (77/249/EC) and indeed to establish myself in Amsterdam the Lawyers Establishment Directive (98/5/EC). If clients so require, I shall take advantage of that legislation for so long as I can.

Thursday, 19 January 2017

Brexit IP Briefing January 2017



Jane Lambert

There have been four important developments since I delivered IP Planning for Brexit to an invited audience of specialist solicitors and patent and trade mark attorneys in chambers on 7 Dec 2016.

First, the Bar Council published a set of papers that had been contributed by the specialist bar associations on the legal issues arising from Brexit and coordinated by Hugh Mercer QC's Brexit working group under the title The Brexit Papers.  In a foreword, the Chair of the Bar explained that the purpose of those papers was
"to help the Government evaluate a range of pressing public interest concerns arising from the UK’s decision to withdraw from the EU. These include such matters as crosscountry co-operation for the speedy arrest of suspects, child protection across the EU, ensuring firms of all sizes can compete and trade profitably, managing changes to intellectual property law so that our creative industries can flourish, and maintaining current levels of consumer protection and of course our human rights."
The Brexit Papers cover jurisdiction and enforcement of judgments, access to the EU legal services market, the impact of Brexit on international arbitration, the implications of Brexit for insolvency and restructuring,  Brexit and intellectual property,  the impact of Brexit on UK tax, family law and criminal justice and Brexit and competition law.

The second major development was the appointment of Jo Johnson MP as the Minister of State for Universities, Science, Research and Innovation with responsibility for IP in succession to Lady Neville-Rolfe. In evidence to the House of Commons Science and Technology Committee Mr Johnson on 11 Jan 2017, Mr Johnson confirmed his predecessor's commitment to ratifying the UPC Agreement. On being asked how this country could remain in the UPC after we leave the EU, Mr. Johnson replied that the UPC is not an EU institution and that such questions as our continued participation and London continuing to host one of the sections of the central division were questions that will form part of the bigger discussion around the Brexit negotiations (see Minister questioned on managing intellectual property and technology transfer 11 Jan 2017).

The third development was the Prime Minister's Lancaster House speech on 17 Jan 2017. Although Mrs May said nothing about the Unified Patent Court or even IP as such, she did give some pointers as to her negotiating strategy which I discussed in Just where does Mrs May's Speech leave the Unified Patent Court? 18 Jan 2017 NIPC Law. Her plan appears to opt out of everything and then try to negotiate ad hoc opt-ins as she did when she was Home Secretary. That is consistent with her minister's reply to the Commons committee.

The last development was the Unified Patent Court's announcement on its website on the 16 Jan 2017 that:
"The Preparatory Committee is now working under the assumption that the Provisional Application Phase (PAP) will start end of spring 2017, presumably in May, and that the Agreement on the Unified Patent Court (UPCA) can enter into force and the Court become operational in December 2017."
As we say in Manchester, "Aye happen."  The Court did, however, hedge its announcement with the following heavy disclaimer:
"The above timetable is conditional and provided with the clear disclaimer that there are a number of factors that will dictate whether it is achievable. The most important factors in meeting these dates is the necessary ratifications of the UPCA and accession to the Protocol on Provisional Application. If these are not achieved the time-plan will be disrupted."
So no chicken counting just yet.

Finally, a bit of personal news. I have just contributed the chapter on intellectual property and data protection to a book entitled Doing Business Post Brexit - A Practical Guide to the Legal Changes edited by Helen Tse of Glaisyers that is to be published in due course by Bloomsbury Publishing.  My contribution stated the law as it stood as at the 31 Dec 2016.

Should anyone require amplification or clarification of any part of this first Brexit IP Briefing he or she should call me on +44 (0)20 7494 5252 during office hours or send me a message through my contact form.