In his first decision on the transfer of a case from the Patents County Court (PCC) to the High Court, His Honour Judge Colin Birss QC, newly appointed as PCC judge, has emphasised the significance of the value of the dispute and the size and turnover of the parties in determining such applications.
In ALK-Abello v Meridian Medical Technologies  EWPCC 14 (9 November 2010) HHJ Birss QC concluded that:
- The PCC was established to ensure that SMEs and private individuals were not deterred from innovation by the potential cost of litigation to safeguard their rights
- The transfer criteria which consider the underlying value of the dispute and the size and worth of the parties outweigh other considerations of complexity, or convenience or the importance of the outcome. This works both ways, allowing SMEs to retain the benefit of the speedier, cheaper procedures of the PCC, but, where all parties are substantial enterprises (as in this case), allowing transfer even hough the case is entirely suitable for the PCC in terms of the issues involved and the case management machinery available
- The judge commented that the party challenging the application for transfer claimed that the patent in question did not cover the EpiPen (the current market leader) upon which the market value for the new adrenaline auto-injection product JEXT (in respect of which a declaration of non-infringement was sought) was based. However, since there was no evidence on this, such claims could not be taken into account in the assessment of value
- The judge confirmed that decisions made prior to the recent changes to PCC procedure (1 October 2010) were still applicable
- The decision suggests that where none of the parties are private individuals or fall within the definition of SMEs set out in the Commission's Recommendation (2003/361/EC), the PCC has discretion to transfer the case to the High Court if other criteria are conducive, in particular the value of the claim.
Criteria for transfer and their application
Having established that the PCC had discretion to decide whether or not to order a transfer to the High Court (under s 42 of the County Courts Act 1984), the Judge reviewed the various criteria that applied to the decision. These included CPR Pt 30.3 on transfer from the Country Court to the High Court generally, section 289(2) of the Copyright Designs and Patents Act 1988 (CDPA) which applied to the PCC specifically, and the new paragraphs 9.1 and 9.2 of Practice Direction 30 (Transfers) which apply in the PCC after 1 October 2010 (referred to in new Pt 63.18). HHJ Birss QC held that the provisions on transfer in Practice Direction 30 (supplementing CPR Pt 30) apply from 1 October 2010 to all cases before the PCC whenever they commenced and the parties did not dispute this.
The Judge also referred to Chaplin v Lotus (Court of Appeal, unreported, 17 December 1993) in which the jurisdiction of the PCC and the question of transfers were considered by Sir Thomas Bingham, the then Master of the Rolls. The Court of Appeal in that case considered s289(2) CDPA and the County Courts Act 1984 holding that the financial position of the parties was the key factor in the decision to transfer and that an important question of fact or law does not oblige transfer. The Court of Appeal also noted that the PCC was established to provide cheaper, speedier, more informal procedures to ensure that SMEs and private individuals "were not deterred from innovation by the potential cost of litigation to safeguard their rights".
HHJ Birss QC concluded that the factors he should consider were:
- The financial position of the parties – including but not limited to whether a party can only afford to bring or defend the claim in the PCC – a factor closely related to justice.
- Whether the claim is appropriate to be determined by the PCC. This includes:
- The value of the claim (including the value of an injunction and the amount in dispute
- The complexity of the issues
- The estimated length of trial (including whether it would be more convenient or fair for the hearing to be held in some other court)
- The importance of the outcome of the claim to the public in general (although a case raising an important point of fact or law need not necessarily be transferred)
- The sort of cases the PCC was established to handle (as set out in Chaplin v Lotus above).
In weighing up these factors in the present case, HHJ Birss QC commented that he was in a strange situation where he had to decide whether to transfer a case which he had no doubt was entirely suitable to be tried in the PCC from the point of view of the issues arising and the case management machinery available to deal with it. There was no issue of potential delay through transfer in this case, which made the decision to transfer less difficult. Given HHJ Birss QC's decision in Technical Fibre Products v Bell  EWPCC 011 last month that the new cost capping rules do not apply retrospectively (this case having been lodged at the PCC in advance of the changes coming into force), there would not have been any significant costs savings if the case had stayed at the PCC either. The value of the case (estimated at the greater part of a $24 million market) and the financial position of the parties (both substantial entities) however pointed in favour of a transfer to the High Court.
The Judge looked at the definitions of SMEs set out in the Commission Recommendation of 6 May 2003 concerning the definition of micro, small and medium sized enterprises (2003/361/EC) which suggest that SMEs are enterprises employing fewer than 250 employees with annual turnovers or balance sheets of less than 43 million Euros.
It seems likely that any cases where all the parties are more substantial than the SME criteria will in future be transferred to the High Court should any party so request.
The status of the PCC
HHJ Birss QC, whose appointment as the PCC Judge took effect on 5 October, defended the status of PCC decisions in his judgment. He commented that one factor in the Defendants' request to transfer was that as American corporations they were concerned that their rights might be decided in a lesser court than the High Court: "Perhaps the name 'Patents County Court' has put them off". He confirmed the jurisdiction of the PCC was that of the High Court, namely the whole of England and Wales and that the same remedies were available in each court, concluding that "There is no reason whatsoever why litigants foreign or domestic should be put off from having their intellectual property rights determined in the PCC".