Tuesday, 28 May 2013

UK: Intellectual Property Bill

The United Kingdom Intellectual Property Bill was introduced in the House of Lords on 10 May 2013 and received its first parliamentary discussion on 22 May 2013 at Second Reading. The Bill was referred to a Grand Committee for further examination, which is scheduled to begin on 11 June 2013, following the recess.

The Bill addresses a disparate collection of intellectual property issues, mainly concerning itself with designs and patents. Apart from laying the foundations for the Unified Patent Court, pursuant to the agreement among EU Member States reached on 19 February 2013, the Bill’s most eye-catching provision is the creation of a criminal offence of deliberate infringement of a UK or Community registered design, to be enforceable by Trading Standards.

The offence is committed where someone copies a registered design in the course of a business so as to make a product exactly or substantially to the design, knowing or having reason to believe that the design is a registered design. An offence is similarly committed in relation to such a copy where someone “offers, puts on the market, imports, exports or uses the product, or stocks it for one or more of those purposes”, knowing or having reason to believe that the design has been copied without the consent of the registered proprietor.

It seems that the IPO was not satisfied with the established wording of section 107 of the Copyright, Designs and Patents Act 1988 as a model for describing the ancillary acts which will incur liability. Perhaps some tidying up will occur in committee: “offering” seems rather vague.

The offence is punishable with up to 10 years’ imprisonment, putting it on a par with the most serious copyright and trade mark offences. The criminalisation of registered design right infringement has for many years been the objective of the designers’ anti-counterfeiting body, ACID, who have welcomed the Bill. However, as ACID and some peers at second reading observed, unregistered design right, which is in practice of greater importance to SME designers, is not covered by the offence.

The Bill also provides for UK accession to the Hague system of international design registration. This will allow UK designers to apply through WIPO for multiple national design registrations using a single application.

Of great interest to policy advocates is the creation of a duty in the Secretary of State to make an annual report to Parliament on the Intellectual Property Office’s contribution to the promotion of innovation and economic growth in the UK and the effectiveness of intellectual property legislation in that regard (including the legislation of the European Union). This report is likely to become the focus of much lobbying, as it will not only influence the legislative and administrative agenda at home, but may also be a bridgehead into policy-making at EU level.

In responding to speeches calling for a more specific (and broader) specification of the report, the IP Minister, Lord Younger, assured peers that “the report will also cover policies and services that impact on the licensing of intellectual property". This will include the Copyright Hub, centrepiece recommendation of the controversial Hargreaves Review.

Some peers speaking in the Second Reading debate indicated an intention to move amendments. Lord Clement-Jones, in a speech largely directed to strengthening intellectual property protection, urged the IP Minister to consider position of authors in relation to unfair contracts. The IP Minister undertook to discuss “this important and complex matter further”, indicating that he would meet with Lord Clement-Jones and the Creators’ Rights Alliance. This raises the prospect of further attempts to interfere with freedom of contract in the licensing sphere, something the Government has embraced in relation to copyright exceptions. Other countries, such as Germany, have made attempts to strengthen the author's contractual position as against the distributor (see Articles 32 and 32a of the Urheberrechtsgesetz, as amended in 2002 (English version)).

The Bill now proceeds to consideration in Grand Committee, where amendments are made only by consensus. While the debate there will indicate what will be urged when the Bill returns to the floor of the House of Lords, it is unlikely that the Bill will undergo significant modification at this stage.

Wednesday, 22 May 2013

Supporting Yorkshire Business

Huddersfield Media Centre, Source The Media Centre

Jane Lambert

Since 2004 I have supported Yorkshire businesses and their professional advisers by offering specialist advice on intellectual property and technology law and representation before the Patents and Patents County Courts, Chancery Division and Intellectual Property Office tribunals as the only full time specialist intellectual barrister outside London. I have provided those services from Huddersfield Media Centre. Although my practice is now managed by Stephen Broom and George Scanlan I am still there. You can still get through to me on 01484 590090 or 0113 320 3232 or by filling in my contact form.

The big difference is that I am no longer on my own. I can now call upon support from my excellent colleagues in our IP and Technology Law Group as well as those from other departments such as Atlas Tax Chambers whose members include Anne Fairpo, an authority on IP and tax.

One of the reasons I joined 4-5, Gray's Inn Square was to provide a better service to my Northern clients. Until 30 Sept 2010 the Leeds District Registry and County Court were the most convenient forums for those in Yorkshire. Amendments to Part 63 of the Civil Procedure Rules which came into effect on 1 Oct 2010 made the Patent County Court in London a more suitable venue for most intellectual property disputes wherever they came from for the reasons I gave in my article "New Patents County Court Rules" 31 Oct 2010, NIPC Law. That advantage has been reinforced by the introduction of the small claims track. In order to provide effective representation before that court a London base is essential.

However, it is not necessary to go to London for everything. As I pointed out in "Maybe we need to think again about the Chancery District Registries and County Courts" 5 May 2013 the Patents County Court is not suitable for every intellectual property case. Now that the Patents County Court has become busy and costs are managed in all courts by virtue of Section II of the Part 3 of the Civil Procedure Rules and the Costs Management Practice Direction litigating in Leeds has advantages. The Leeds District Registry and County Court retain their jurisdiction to hear intellectual property claims that do not relate to patents, registered and registered Community designs, chip topographies and plant breeders' rights. If you are litigating in Leeds it is obviously better to have counsel who understands the local practice, knows the local judges and has chambers in Yorkshire.

We believe that we also enjoy a enjoy a logistical advantage in proceedings in the Intellectual Property Office. Hearing officers tend to sit in Newport but most barristers and other advocates attend them by video link from the IPO's London premises at 4 Abbey Orchard Street. We believe that it is better for an advocate to be in the same room as the hearing officer as it enables the advocate to monitor the tribunal's reactions and tailor his or her submissions accordingly.  Newport is no further than London and much less expensive. It is also more convenient as advocates can park just outside the entrance to Concept House where the hearings take place. We are developing a presence in Newport. My colleague David Hughes lives in South Wales. Our telephone number in Newport is 01633 530005.

I continue to chair the Sheffield and Leeds Inventors Groups which meet at 18:00 in Sheffield and Leeds Central Libraries on the first Monday and second Wednesday of every month. Both groups have had some excellent meetings recently such as Dan Brookes's presentation to Leeds (see "Patent Box and R & D Credits: Dan Brookes's Slides" 15 May 2013, IP Yorkshire) and Sheffield's workshop on the Patents County Court small claims track ("How Small Businesses in Yorkshire can protect their Intellectual Property" 14 Oct 2012 IP Yorkshire). I hold IP clinics at the Barnsley Business and Innovation Centre between 10:00 and 12:00 every second Tuesday where you can book a free 30 minute consultation by filling in this booking form. Incidentally, if you cannot easily get to Barnsley I will give you up to 30 minutes free advice by phone or put you in touch with a colleague from chambers or some other profession. Just fill in this internet enquiry form.

Through those activities I have got to know angel investors, business advisers, branding consultants, chartered accountants, community development finance institutions, equity fund managers, local enterprise partnership board members and officials, nominated advisers, product designers, marketers, university researchers and, of course, solicitors, patent and trade mark attorneys. I write about some of them in my IP Yorkshire blog,  Now that I am part of a bigger set of chambers it is likely that I shall get to know many more. . 

If you want to discuss this article or learn more about any of our services we can be contacted on 01484 590090 or through our contact form.

Sunday, 5 May 2013

Maybe we need to think again about the Chancery District Registries and County Courts

Manchester Civil Justice Centre, Wikpedia Commons

Jane Lambert

In "Success Fees and ATE Premiums in the Patents County Court: Henderson v All Around the World Recordings Ltd" 4 May 2013 NIPC Law, I blogged about Judge Birss QC's decision in Henderson v All Around the World Recordings Ltd and Another [2013] EWPCC 19 (27 March 2013) where an impecunious singer song writer who had successfully brought proceedings in the Patents County Court for infringement of her performer's rights against a major record label was allowed  £52,484.25 in costs. Had she brought her claim in the Chancery Division she might well have been awarded £232,676.20.

One of the reasons why Judge Birss QC would not allow her more was that
"a litigant who wishes to recover a reasonable proportion of the totality of his of her legal costs has a clear option available, to litigate in the High Court. In that system none of the problems now faced by the claimant would arise. I do not agree that the case would simply have been transferred to the PCC if it had been commenced in the High Court. Mr Pearson submitted that justice would not be done if I did not depart from the costs cap. That submission would have provided solid grounds for the claimant to argue in favour of keeping her case in the High Court. Indeed if it was a concern to the claimant or her legal advisers in the first place, the case should have been begun in the High Court".
His Honour added at paragraph [40]:
"To make a costs award which risks causing a winning claimant to be deprived to a significant extent of the fruits of her victory is very unwelcome. However I believe what is really happening in this case is an example of a psychological phenomenon I have become familiar with in the PCC. When the risk was in the future, the claimant wished to litigate in the Patents County Court to protect herself against the risk of an adverse costs award. That is why proceedings were brought and pursued in this court with this costs regime. The impact of the PCC cap on the claimant's actual costs if she won was predictable. If the claimant had lost, the costs cap would have been strongly relied on. The claimant was able to enforce her intellectual property rights in this case because of the predictability of the costs cap remaining in place. She was relying on it. Now that the claimant has won, the uncertainty has evaporated. The balance of risk and reward is now entirely different. In today's circumstances it now seems to the claimant quite unfair that the cap prevents her from recovering a higher share of her costs. But that is because the position after judgment is very different."
As we say in the North, "thou can't have tha cake an' ha'penny."

Now the issue in Henderson was whether the £50,000 costs cap precluded the recovery of the claimants' lawyers's success fees and after-the-event insurance premium in the Patents County Court. That is unlikely to be an issue for very much longer now that the Legal Aid Sentencing and Punishment of Offenders Act 2012 is in force for the reasons I explained in "Intellectual Property Litigation - the Funding Options" 18 April 2013 NIPClaw. There are, however, other reasons why the Patents County Court might not be right for a particular case. First, there is a £500,000 cap on the damages that can be awarded by that Court. Second, there is a 2 days time limit and a £50,000 costs cap and there are some cases that just cannot be completed within that time or for that cost. Thirdly, the Patents County Court sits in London and while I have won directions from both Judge Fysh QC and Judge Birss QC for the Court to sit in Manchester and Leeds I don't think it is unfair to say that I encountered a fair measure of judicial scepticism on both occasions. Fourthly, the Patents County Court has become very busy and its resources have failed to keep pace with its expanding workload.  So maybe it is time to think again about litigating intellectual property cases outside London.

There has always been a bit of snobbery about IP litigation outside London which has given rise to a number of urban myths most of which are completely unfounded.  Chancery business outside London is presided over by two High Court judges, 
  • the Vice-Chancellor of the County Palatine of Lancaster who was Sir Michael Briggs until his recent elevation to the Court of Appeal for the Northern and North Eastern Circuits (North West, North East and Yorkshire and the Humber); and
  • Mr Justice Morgan for Wales, the Midlands and the West.
They are supported in each circuit by a number of able specialist circuit judges, some of whom did a fair amount of intellectual property work at the Bar.

CPR Part 63.2 reserves patent, registered and registered Community design, semiconductor topography and plant breeders' rights cases to the Patents Court and Patents County Court but all other intellectual property cases can be brought in the Chancery Division or in any county court where there is also a Chancery District Registry (CPR 63.13). According to paragraph 16.2 of the Part 63 Practice Direction there are Chancery district registries at Birmingham, Bristol, Caernarfon, Cardiff, Leeds, Liverpool, Manchester, Mold, Newcastle upon Tyne and Preston though the Caernarfon, Mold and Preston County Courts do not have trade marks jurisdiction (paragraph 16.3)..

Cases that might be suitable for litigation in Birmingham, Bristol, Caernarfon, Cardiff, Leeds, Liverpool, Manchester, Mold, Newcastle upon Tyne or Preston would be those where:
  • the parties and their solicitors are in the same neighbourhood;
  • the amount in dispute exceeds £500,000; 
  • the trial is likely to exceed 2 days; or
  • the costs budget is likely to exceed £50,000.
With regard to costs it should be noted that the costs management regime provided by Section II of CPR Part 3 and the Part 3E Practice Direction will apply to most intellectual property litigation wherever they take place.

Chancery practice in the District Registries differs slightly from that of London in a few respects. Cases are managed by district judges rather than.  Applications for injunctions have to be made on special applications days which differ from court to court.  Chapter 12 on page 61 of the current Chancery Guide provides general guidance on Chancery business outside London and Appendix 16 specific guidance on Chancery business in the North East. Further information on local practice directions can be obtained from the Practice Notes tab of the Northern Chancery Bar Association website. 

With resident tenants in the North of England and Wales we are better placed than most chambers to offer advice on intellectual property law and representation outside London than most chambers.  In addition to our 020 7404 5252 number we can be contacted at:
  • Birmingham 0121 285 1551
  • Bristol 0112 325 6300
  • Leeds 0113 320 3232
  • Manchester 0161 850 0080
  • Newcastle upon Tyne 0191 580 890
  • Newport 01633 530005
  • Norwich 01603 343030
  • Nottingham 0115 824 9090
  • Portsmouth 023 9316 2030
Over the next few months we shall be holding workshops and seminars to meet solicitors, patent and trade mark attorneys and other professionals outside London,   The first will be on R & D credits and the patent box (see "Patent Box Roadshows" 4 May 2013). We have already held the first in Liverpool on 29 April 2013 (see "The Patent Box Workshop: Liverpool Inventors Club" 3 May 2013 IP North West) and our next will be in Leeds on 8 May 2013 (see "Leeds Inventors Group: Patent Box and R & D Credits"  4 May 2013). We look forward to meeting you.