Enforcement ofIntellectual PropertyRights  Jane Lambert  QualitySolicitors Jackson & Canter  Wednesday 23 May 2012
Terminology• The terms “intellectual property” and  “intellectual asset” are different things• “Intellectual assets” inclu...
What is IP in Practice?• IP is the umbrella term for a bundle of  legal rights such as patents, copyrights,  trade marks a...
What happens if an IPR isinfringed?• Some IP infringements are also offences if  committed on an industrial scale  (bootle...
Methods of Enforcement Unless an IP owner and an alleged infringer agree or have agreed to resolve their disputes by some ...
Civil Litigation• Claims must be brought in the  jurisdiction where the infringement  occurs• The owner of a French patent...
Civil Litigation in England• Claims relating to patents, registered  and registered Community designs,  semiconductor topo...
Civil Litigation in England• Claimant’s solicitors or patent or trade  mark attorneys send the alleged  infringer a letter...
Proceeding in any court butthe Patents County Court• In urgent cases the claimant seeks the  defendant for undertakings no...
Proceeding in any court butthe Patents County Court If the defendant is likely to hide evidence, remove his or her assets ...
Proceeding in any court butthe Patents County Court• Claim form and particulars of claim is  served• Defence and possible ...
Proceeding in any court butthe Patents County Court•   Exchange of witness statements•   Exchange of expert’s reports•   P...
Proceeding in any court butthe Patents County Court• If Claimant wins he or she will get an  injunction and an order for a...
Proceeding in any court butthe Patents County Court• In 2003 IPAC (Intellectual Property  Advisory Committee) found that t...
Proceeding in the PatentsCounty CourtNew rules for came into force on 1 Oct2010 that limit• costs to £50,000 up to trial a...
Small Claims Track• Hargreaves recommended a small claims  track for Patents County Court• HMG accepted recommendation and...
Alternatives to Litigation• Uniform Domain Name Dispute  Resolution Policy or similar schemes  for domain name disputes• A...
Any Questions?         Jane Lambert         NIPC         The Media Centre         7 Northumberland St.         Huddersfiel...
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Enforcement of intellectual property rights for sme

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Slides for my talk on IP enforcement at QualitySolicitors Jackson & Canter's seminar on "Making Money from IP".

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Enforcement of intellectual property rights for sme

  1. 1. Enforcement ofIntellectual PropertyRights Jane Lambert QualitySolicitors Jackson & Canter Wednesday 23 May 2012
  2. 2. Terminology• The terms “intellectual property” and “intellectual asset” are different things• “Intellectual assets” include books, brands, computer programs, films, inventions, performances and scores• “Intellectual property” is the legal protection of those assets
  3. 3. What is IP in Practice?• IP is the umbrella term for a bundle of legal rights such as patents, copyrights, trade marks and registered designs• All of those rights are expressed negatively (e.g. a “copyright” confers the right to prevent from copying, publishing or other restricted acts and a patent a monopoly of an invention)• In other words, an IP right is a right to bring a law suit.
  4. 4. What happens if an IPR isinfringed?• Some IP infringements are also offences if committed on an industrial scale (bootlegging, counterfeiting and piracy)• Some copyright and related rights owners have formed associations to license their works known as “collecting societies”• Otherwise an IP owner is on his or her own
  5. 5. Methods of Enforcement Unless an IP owner and an alleged infringer agree or have agreed to resolve their disputes by some other means of dispute resolution, the IP owner has to sue the alleged infringer for injunctions, damages and other relief in the civil courts
  6. 6. Civil Litigation• Claims must be brought in the jurisdiction where the infringement occurs• The owner of a French patent must sue a person who infringes his patent in France even if the owner is British and the infringer is Australian• Some countries such as UK have multiple jurisdictions
  7. 7. Civil Litigation in England• Claims relating to patents, registered and registered Community designs, semiconductor topographies and plant varieties must be brought in the Patents Court or Patents County Court• All other IP claims must be brought in Chancery Division or a Chancery County Court
  8. 8. Civil Litigation in England• Claimant’s solicitors or patent or trade mark attorneys send the alleged infringer a letter before claim unless the claimant needs an interim injunction• Defendant or his solicitors or attorneys should send a response• Negotiations or ADR should follow or the claimant sues
  9. 9. Proceeding in any court butthe Patents County Court• In urgent cases the claimant seeks the defendant for undertakings not to infringe his alleged rights pending trial• If the defendant refuses to give those undertakings, the claimant must apply to the Chancery applications judge for an interim injunction• Judge decides on the “balance of convenience”
  10. 10. Proceeding in any court butthe Patents County Court If the defendant is likely to hide evidence, remove his or her assets from the UK or otherwise take steps to defeat justice, the court has power to grant “search orders”, “freezing injunctions” or other relief for a short time without notice.
  11. 11. Proceeding in any court butthe Patents County Court• Claim form and particulars of claim is served• Defence and possible counterclaim is served• Reply and defence to counterclaim is served• Automatic disclosure• CMC
  12. 12. Proceeding in any court butthe Patents County Court• Exchange of witness statements• Exchange of expert’s reports• Pre-trial review• Setting down for trial• Trial bundles• Skeleton arguments• Trial on liability
  13. 13. Proceeding in any court butthe Patents County Court• If Claimant wins he or she will get an injunction and an order for an account of profits or an inquiry as to damages• Claimant serves points of claim• Defendant serves points of defence• Exchange of forensic accountants’ reports• Account or inquiry
  14. 14. Proceeding in any court butthe Patents County Court• In 2003 IPAC (Intellectual Property Advisory Committee) found that the average cost of infringement litigation in the High Court was £1 million and above, between £150,000 and £250,000 in the county courts but no more than €50,000 in France, Germany or Netherlands• Probably explains why UK trails other EU states in European patents
  15. 15. Proceeding in the PatentsCounty CourtNew rules for came into force on 1 Oct2010 that limit• costs to £50,000 up to trial and £25,000 for account and inquiry• Trials to 2 days• Evidence to specific issues
  16. 16. Small Claims Track• Hargreaves recommended a small claims track for Patents County Court• HMG accepted recommendation and held consultations• Small claims track rules and practice to apply to the Patents County Court• Court of Appeal held in Sullivan v Bristol Films that chancery county courts can hear small IP claims already
  17. 17. Alternatives to Litigation• Uniform Domain Name Dispute Resolution Policy or similar schemes for domain name disputes• Advisory opinions on infringement and validity of UK or European patents by IPO patent examiners under s.74A Patents Act 1977• WIPO Arbitration and Mediation Centre
  18. 18. Any Questions? Jane Lambert NIPC The Media Centre 7 Northumberland St. Huddersfield HD1 1RL 0800 762 0055www.nipclaw.com

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