A review of some early decisions from the newly re-launched PCC and some hints from His Honour Judge Colin Birss QC on how he sees the PCC operating going forward.

In the October edition of this newsletter, we wrote about the re-launch of the Patents County Court (PCC) on 1 October 2010, under new rules, and under the auspices of a new judge, HHJ Colin Birss QC.[1] Since then, HHJ Birss QC has issued a number of judgments giving guidance on the applicability of the new rules. He also gave an address to members of AIPPI on 24 November 2010.

The New Rules

HHJ Birss QC addressed the question of which rules should apply to existing PCC cases in the absence of transitional provisions for the new rules, in Technical Fibre Products and another v. David Walton Bell and others [2010] EWPCC 011. In this decision, he made it clear that the new rules would apply to all cases commenced in the PCC after 1 October 2010. The new rules consisted of a package of measures, (addressing statements of case, statements of truth, case management, conduct of trials, costs and other matters), and were intended to operate as such and must, therefore, be applied to cases as a whole.

It is not possible to apply the new rules as a whole to existing cases in the PCC. Therefore, PCC actions commenced before 1 October 2010 will be dealt with under the old rules.

The new provisions on transfer set out in Practice Direction 30, which supplements CPR Part 30, apply to all cases from 1 October 2010, whenever they were commenced.

HHJ Birss QC further elaborated on the nature of the PCC and the new rules in his address to the AIPPI. He said that they were intended to create a quick and cheap forum for the resolution of all types of intellectual property dispute, which was to be a continental style court, (with a written procedure, and an involved judge), which also retained key features of British justice, such as, and where appropriate, cross-examination and disclosure.

The new rules relating to pleadings would require parties to state concisely all of the facts and arguments on which they relied. HHJ Birss QC indicated that for patent claims which included allegations of infringement, or invalidity by virtue of anticipation, he would almost certainly expect the pleadings to include a claim chart.

HHJ Birss QC said that he envisaged that these longer-type pleadings would interact with the case management conference (CMC), so that directions would be given, based on a consideration of all of the issues in the pleadings. Once the directions had been set, parties would not be able to diverge from them without the permission of the court, so parties must plead their cases fully to enable appropriate directions to be given at the CMC.

The new provisions requiring the statements of truth on pleadings to be signed by persons with knowledge of the facts alleged are designed to allow statements of case to stand as evidence.

Transfer out of the PCC

In ALK-Abelló v. Meridian Medical Technologies and Dey Pharma [2010] EWPCC 14, HHJ Birss QC considered the various rules[2] and case law governing transfer from the PCC to the High Court. He identified the following factors to be considered by the court:

  • the financial position of the parties, including but not limited to considering whether a party can only afford to bring or defend a claim in the PCC;
  • whether the claim is appropriate to be determined by a PCC, which involves considering:
  • the value of the claim;
  • the complexity of the issues; and
  • the estimated length of the trial; and
  • the importance of the outcome of the claim to the public in general.

A factor which did not need to be considered was the availability of specialist judges, since they are available in both courts.

In ruling that ALK-Abelló should be transferred out of the PCC, the key factors which appeared to influence HHJ Birss QC's decision were the financial position of the parties and the value of the case on the evidence.

This has been borne out by HHJ Birss QC's later comments to the AIPPI, where he made it clear that the PCC has been set up for the benefit of small and medium enterprises (SMEs), and that he would transfer cases not fit to be dealt with by the PCC to the High Court.

Transfer into the PCC

In Vivienne Westwood v. Anthony Knight [2010] EWPCC 16, HHJ Birss QC ruled that the new rules as a whole will apply to cases transferred to the PCC on or after 1 October 2010. He indicated that provided statements of case filed in the High Court set out concisely all facts and arguments on which a party relies, they would not need to be re-drafted, however, he would permit amendments to ensure the pleadings complied fully with the new rules. HHJ Birss QC reserved his position on the question of costs, and in particular, whether the whole costs of the proceedings started in the High Court and transferred to the PCC should be covered by the PCC costs cap, or whether the costs incurred before transfer should be treated differently.

Experience so far

HHJ Birss QC said in his address to the AIPPI that his diary was filling up, and that parties were filing more and more claims in the PCC. The time between a directions hearing on a case and trial was shorter than that in the High Court, and he intended to continue on this basis, with the aim of hearing cases between 4 and 6 months after the CMC.