What happens if
Intellectual property is the legal protection of an “intellectual asset”, that is to say a
brand, design, technology or artistic or literary work: assets that give one business a
competitive advantage over all others in a particular market. Except for the
infringement of copyright, trade mark or rights in performances on a commercial
scale, intellectual property infringement is not a criminal offence. It is therefore up to
the intellectual property owner to police and enforce his or her rights.
This means bringing a claim for an injunction (order to stop infringement on pain of fine or
imprisonment) and seeking damages (compensation for the harm suffered) in the civil
courts. In England and Wales a claim for the infringement of any intellectual property right
other than infringement of a patent, registered design, semi-conductor topography design or
plant variety may be brought at:
Royal Courts of Justice in London
Central London County Court
Leeds, Liverpool, Manchester, Newcastle, Bristol, Birmingham, Cardiff, Caernarfon,
Mold and Preston District Registry or County Courts.
Claims for infringement of patents, registered designs, semiconductor topographies or plant
varieties must be brought in London before a Patents Judge of the Royal Courts of Justice or
the Central London County Court.
You will need to consult a barrister or solicitor, patent or trade mark agent with higher courts
rights of audience and a solicitor or patent or trade mark agent with the right to conduct
litigation. If you instruct a barrister or solicitor make sure they have plenty of experience of IP
litigation. Most specialist barristers belong to the Intellectual Property Bar Association and
most specialist solicitors to the Intellectual Property Lawyers’ Association. NIPC keep
panels of specialist solicitors, patent and TM agents whom we know to be good.
How Much will Enforcement Cost?
In 2003 IPAC (HM government’s high level intellectual property advisory committee)
published entitled “The Enforcement of Patent Rights” which can still be downloaded from
Mandy Haberman’s website at http://www.mandyhaberman.com. The report compared
patent infringement litigation in England with the costs in France, Germany, the Netherlands
and the USA. Costs in the continental countries did not exceed €50,000. In England a
county court action averaged between £150,000 and 250,000 and a High Court action
around £1 million. The costs in the USA were between US$2 and 4 million but the loser
generally does not have to pay the winner costs and lawyers are allowed to accept
instructions in exchange for a share of any damages which makes a no win no fee
arrangement much more attractive than it is in England. England is in effect the most
expensive country in which to enforce intellectual property rights.
What can be done about it?
Insurance: Consider before-the-event intellectual property insurance. Average premium is
around £5,000 which is chicken feed compared to cost of litigation. Specialist brokers
include McParland Finn in Leeds and Manchester, Miller and Charles Milne. After-the-event
is much more expensive (usually one third of the liability).
Collecting Societies: Bodies that act for a number of copyright owners, performers and
other intellectual property owners. They negotiate terms for the reproduction, performance or
other use of their members’ works and collect licence fees which they distribute to their
members. Best known collecting societies are the PRS (Performing Right Society) and the
MCPS (Mechanical Copyright Protection Society).
Intellectual Property Office Tribunals: The comptroller of the Intellectual Property Office
appoints officials known as “hearing officers” to hear and determine a variety of disputes
over patents, trade marks, registered designs and unregistered design rights. Costs rarely
exceed a few thousand pounds.
Intellectual Property Office Opinions: An examiner will give an opinion as to whether a
patent is valid and whether it has been infringed for £200 pursuant to s.74A of the Patents
Domain Name Disputes: Disputes over who is entitled to a domain name can be referred to
the WIPO (World Intellectual Property Organization), the UN agency for intellectual property,
and other arbitration services for US$1,500 in the case of a generic (.com, .org, .info, .biz
etc) top level domain name. Nominet operates a similar scheme for .uk names and the
Czech Arbitration Court for .eu names. Decisions are made on the documents only and are
delivered within a few weeks,
Mediation: WIPO, the IPO and several private organizations including my chambers operate
mediation services. The parties must be willing to settle their dispute by agreement and
execute a mediation agreement, This is the form that NIPC uses:
"Any dispute or difference between the parties will be referred to mediation in
accordance with the NIPC Mediation Rules by a mediator agreed by the parties or, in
default of agreement within 14 days appointed by the Managing Director of NIPC Ltd."
Arbitration: The WIPO and several other bodies including my chambers operate specialist
IP arbitration services. Again there must be an agreement and this is the one that we use:
"(1) Any dispute or difference between the parties shall be referred to arbitration before
a single arbitrator agreed by the parties or, in the absence of agreement within 14 days
of the reference, appointed by the managing director of NIPC Ltd.
(2) The seat of the arbitration will be England and Wales,
(3) The NIPC Arbitration Rules will apply."
15 September 2010
The Media Centre
Huddersfield, HD1 1RL
0800 862 0055