The Patents County Court (PCC) has undergone radical reforms over the past few years, including the introduction of a £50,000 limit on costs and an upper limit on damages of £500,000 for claims in the PCC. While this has been excellent news for small and medium sized enterprises (SMEs) who have previously been put off the high costs of the PCC, further changes have now been introduced to the PCC meaning SMEs should be able to more easily and cheaply protect their IP rights.
The Hargreaves Review of Intellectual Property and Growth, which was undertaken in May 2011, recommended the need to improve access for SMEs with low value IP claims. Evidence from the review had shown that around 1 in 6 of SMEs had given up enforcing their IP rights due to high court costs. Following the recommendations made by the review, the Government has introduced a new small claims track for intellectual property cases in the PCC. The new small claims track process, which came into force on 1 October 2012, fixes the costs recoverable and allows damages of up to £5,000 per case.
The process works in a similar way to the current small claims track used for civil claims and applies to copyright, trade mark and unregistered design right claims. The small claims track will not apply to claims relating to patents, registered design rights or plant varieties which can be brought either in the High Court or by using the streamlined multi-track procedure in the PCC.
The main legal remedies available on the small claims track are damages for infringement (or an account of profits) and a final injunction to prevent future infringement. Interim remedies such as interim injunctions and freezing orders are not available on the small claims track and claimants seeking these remedies are advised to use the multi-track procedure even if their claim would be otherwise more suited to the small claims track.
New name for the PCC
The Government has also considered a proposal to rename the PCC the Intellectual Property Court in order to more easily identify the court's jurisdiction, given that it deals with all IP disputes and is not limited to claims relating to patents. The Government issued a call for evidence in 2012 in which it hoped to identify support for the change of name. All responses to the call for evidence thought that the court should be renamed and further developments on the change of name are now expected in 2013/14.
Impact of the small claims track on SMEs
Michael Fallon, Business Minister, in response to the announcement of the small claims track for IP claims, said:
"Lower legal costs will make it easier for entrepreneurs to protect their creative ideas where they had previously struggled to access justice in what could often be an expensive progress. A smarter and cheaper process is good for business and helping businesses make the most of their intellectual property is good for the economy”.
We cannot help but agree and both the UK business industry and IP world have also welcomed the news which should keep down costs for small IP claims and hopefully will give SMEs more confidence to protect and enforce their IP rights.
This publication is intended for general guidance and represents our understanding of the relevant law and practice as at January 2013. Specific advice should be sought for specific cases; we cannot be held responsible for any action (or decision not to take action) made in reliance upon the content of this publication.
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