On 14 January 2010 Lord Justice Jackson published his final report on the costs of civil litigation in the UK following an extensive review of the current situation.  The full report is available here and is both comprehensive and hard-hitting: the Foreword states that "in some areas of civil litigation costs are disproportionate and impede access to justice" and the Report sets out to provide a comprehensive set of reforms to control costs and promote access to justice.

In relation to IP matters (pages 248-257 of the Report), the focus is primarily on the role of the Patents County Court ("PCC") and a range of recommendations (page 257) are made aimed at increasing the usefulness and accessibility of the PCC for smaller value IP disputes.  In particular, the report adopts the proposals from the Intellectual Property Court Users' Committee ("IPCUC") report on reform of the PCC in summer 2009 (click here for details of the report), which include the following:

• a financial limit to the value of claims made before the PCC of £500,00
• the maximum costs award (the amount of the winning party's costs a losing party can   be required to pay) to be £50,000 and would be based on a "fixed scale" arrangement
• there should be specific procedural rules for actions in the PCC, particularly in relation to transfer of cases between the PCC and the Patents Court (High Court) and case management

Another recommendation from the Report is that it should be possible to bring "small claims" and "fast track" actions in the PCC for IP claims with monetary values of less than £5,000 and between £5,000 and £25,000 respectively.  The UK justice system already has arrangements for "small claims" and "fast track" actions in most other fields with specific procedural rules (governing the timetabling, costs and length of trials, etc.) but IP cases have previously been excluded from those arrangements.

The Report also makes proposals for the appointment of judges to the PCC.

Whilst the proposals of the IPCUC in relation to reform of the PCC were generally welcomed when they came out in 2009, there is a degree of skepticism as proposals for reform have been made before, and indeed the current proposals for the PCC sound very similar to those that were made when it was first set up nearly 20 years ago.  However, successful (and complete) implementation of the proposals may provide SMEs with a route to enforce their IP rights without incurring the high levels of costs currently associated with litigation.

We can advise on all aspects of intellectual property litigation.  In the first instance please contact your regular Mewburn Ellis contact or one of our litigation specialists, Matthew Naylor and Stephen Hodsdon.

Published on 19th January 2010