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How to Enforce your Intellectual Property Rights without Going Bust

How to Enforce your Intellectual Property Rights without Going Bust



These are the slides of a presentation that I gave to Leeds Inventors Group in Leeds on the 15 Jan 2014 and IP North West in Accrington on 16 Jan 2014. As ever it is necessary to distinguish between ...

These are the slides of a presentation that I gave to Leeds Inventors Group in Leeds on the 15 Jan 2014 and IP North West in Accrington on 16 Jan 2014. As ever it is necessary to distinguish between "intellectual property" (the laws that protect investment in branding, design, technology and works of art and literature such trade marks, registered designs, unregistered design rights, patents and copyrights) from "intellectual assets" (the objects of such protection such as trade names, logos, designs, inventions, novels, films, computer programs and websites). Except for bootlegging, counterfeiting and piracy (certain infringements of rights in performances, trade marks and copyrights on an industrial scale) infringement of intellectual property rights is not an offence in this country. Thus it is up to each intellectual property owner to enforce his or her rights in the civil courts. Unfortunately civil litigation in England and Wales can be very expensive and the party that loses the litigation usually has to pay the party that succeeds, A survey by IPAC Ithe Intellectual Property Advisory Committee) in 2003 compared the cost of litigation in England and Wales with the cost in France, Germany, the Netherlands and the USA and found that the UK and the USA were the most expensive countries. Costs in France, Germany and the Netherlands ranged from 10,000 to 50,000 euros whereas in England it cost over £1 million to bring an action in the High Court and between £150,000 and £250,000 in the County Court. Costs in the USA were comparable but there the losing party did not usually have to pay the lawyers' fees of the successful party. Thus, the UK was the most expensive and risky country of the developed world to bring an enforcement action. This appears to have had a dampening effect on innovation in that the number of European patent applications from the UK has trailed not just the USA and Japan but also France, Germany and even the Netherlands and Switzerland which have much smaller populations. Over the last 10 years HM government has tried to reduce the cost of dispute resolution. The Patents Act 2004 enabled IPO examiners to give advisory opinions on whether a patent was valid and whether it has been infringed. In 2010 new rules were introduced to limit the recoverable costs of litigation in the Patents County Court to £50,000. In Oct 2012 a new small claims track was introduced in the Patents County Court. The costs of litigation in the UK for small and medium enterprises is now comparable to those in continental Europe. The final change came in Oct 2013 when the Patents County Court was replaced by IPEC (the Intellectual Property Enterprise Court). HM government has also negotiated an agreement with all the EU member states except Italy and Spain by which the EPO will issue a European patent for all their territories as though they were one country (unified patent) and for disputes to be decided by a single Unified Patent Court in Paris,



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    How to Enforce your Intellectual Property Rights without Going Bust How to Enforce your Intellectual Property Rights without Going Bust Presentation Transcript

    • How to enforce your IP without going bust. Jane Lambert
    • An IP right is a title to bring a lawsuit Except for bootlegging, counterfeiting and piracy on an industrial scale, IP infringement is not an offence in the UK. IP rights confer monopolies or exclusive rights which owners must enforce. Infringement proceedings must be brought in civil courts.
    • The Problem In 18 Sep 2008 the UK I published “Why IP Yorkshire” which showed that the UK had consistently lagged behind its competitors in the number of European patent applications. In 2007 there were 4,934 applications from UK compared to 25,176 from Germany.
    • Why? A paper published by IPAC in 2003 showed that the average cost of an infringement action in France and Germany was 50,000 euros but £1 million or upwards in the Patents Court and £150,000 to £250.000 in the Patents County Court.
    • Reforms in England and Wales ● Patent Office Opinions provided by the Patents Act 2004 ● Re-launch of the Patents County Court in Oct 2010 ● Launch of the Small Claims Track in Oct 2012 ● Launch of IPEC in Oct 2013
    • Reform in Europe ● Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection ● Agreement on the Unified Patent Court
    • IPO Opinions S.76A Patents Act 1977 ● whether a particular act constitutes, or (if done) would constitute, an infringement of the patent; ● whether, or to what extent, an invention is not patentable section 1(1)(a) or (b) is not satisfied.
    • IPO Opinions ● ● ● ● ● ● Came into force in 2006 Over 20 a year Published on the IPP website Costs £200 Takes no more than 3 months More info on http://www.ipo.gov. uk/types/patent/p-manage/p-useenforce/popinion.htm
    • Patents County Court ● Proposed by Derek Oulton 1987 ● Established by Copyright, Designs and Patents Act 1988 ● Launched in 1990 with Judge Ford ● Reviewed by Jackson and Arnold ● Re-launched in 2010 with costs and time limits ● Small claims track in 2012
    • IP Enterprise Court (“IPEC”) ● Replaced Patents County Court in Oct 2013 ● Retains rules and practice of Patents County Court including small claims track ● Part of the High Court ● New Enterprise Judge (Richard Hacon QC)
    • Unitary Patent ● Community Patent Convention 1974 never ratified ● 2010 Commission and member states agreed that EU patent unlikely to be implemented ● All member states except Spain and Italy agreed to collaborate on a joint patent
    • Unitary Patent ● A European patent having effect throughout EU except Spain and Italy ● National and European patents (UK) will still be available ● Unified Patent Court sitting in Paris with clusters in London and Munich to resolve infringement and validity disputes
    • Funding ● Up to 2002 legal aid was available for IP disputes ● Legal aid for business disputes abolished by Access to Justice Act 1999 ● Access to Justice Act 1999 extended scope of “no win, no fee agreements” ● Scope limited in April 2013 by LASPO Act
    • Options ● Damages based agreements (contingency fees) ● Before and after the event insurance ● Litigation funding (Association of Litigation Funders)
    • ADR ● Domain name dispute resolution for country code and generic top level domains ● Mediation through various providers including WIPO and IPO
    • Further Information Jane Lambert 4-5 Gray’s Inn Square London, WC1R 5AH 020 7404 5252