This article revisits the IPEC to look at what it is, its purpose and special features to help you understand if it offers a litigation forum for you.
Established in October 2017, IPEC is a specialist Court within the High Court which hears cases on all forms of intellectual property rights (IPR). It has its own set of rules and procedures.
The IPEC was set up to simplify the process for bringing intellectual property related claims and to limit the parties’ liability to cost exposure if they were to lose. In many ways it gives litigation access to SMEs and individuals by providing the degree of certainty in relation to costs. However, more than just that, its aims are to simplify through effective management, the entire process between issuing a claim and trial. As a result it remains, for many, a more attractive route than standard High Court proceedings.
Can the IPEC hear my dispute?
The IPEC has the jurisdiction to hear all manner of intellectual property claims from infringement claims for copyright, trade marks, and designs, invalidity proceedings against patents, contractual claims related to IP rights, to defamation and malicious falsehood proceedings. At present, the Court can hear all UK and some European Community claims. It is not yet known how or whether jurisdiction over European Community matters will be affected by Brexit.
Claims in IPEC are limited to a value of £500,000 (not including costs), although it is possible for parties to agree that IPEC is the most appropriate route for higher claims.
How do I make a claim?
Making a claim is the same as any other proceedings, by issuing a claim form through the Court.
As stated above, the IPEC has its own rules in an attempt to simplify the procedure to allow for parties to dispense with excessive legal fees for elements of procedure experienced in other High Court claims.
The Pre-Action Protocols and conduct should still be followed but it is the following stages which are reduced or compacted to help in costs reduction. The IPEC prefers proactive case management and focussing on the issues and how best to address those in order to reduce time and costs.
In any litigation, one of the major considerations for businesses (in particular SMEs and sole traders) is the management time that goes into effective running of the claim even where lawyers are instructed. One of the impacts of the rules and case management applied in IPEC is that the loss of time in is significantly reduced allowing the parties to also continue with the day-to-day running of their business.
What remedies can I seek?
As a branch of the High Court, a party can seek the same range of remedies through IPEC as any other proceedings for IP matters. Most commonly will be damages and/or an account of profits, and (importantly for IPR cases) a final injunction. However, other remedies, as may be appropriate (for example publication of judgment, delivery up or destruction of infringing items), can be sought.
What is my costs risk?
Perhaps the biggest advantage of bringing a claim in IPEC is that the losing party’s costs exposure is capped, overall, at £50,000 (inclusive of VAT) and separately within that overall limit for each stage of the litigation. This means that should you be unsuccessful in your claim, the most you will have to contribute towards the other party’s costs is £50,000. Whilst the Court has discretion to make costs orders in excess of £50,000, this is only in very exceptional circumstances.
The IPEC offers, for many reasons, an attractive specialist route to resolving IP disputes. Its purpose was always claimed to be to enable the smaller entities to be able to protect their IPR and for the reasons set out above it continues to achieve this aim.
Without doubt, the cap on costs liability is a particular attraction but the overall way in which litigation is conducted is financially significant to the parties.