IP Enforcement For Small And Medium Sized Companies - The Patents County

All businesses, including small and medium sized enterprises (SMEs), have intangible intellectual property (IP) rights.

These rights include:

Goodwill or reputation in their name and branding Copyright in both traditional creative works and all digital material, including software Rights in databases Design rights in utilitarian or functional designs Patented inventions These IP rights are often highly valuable to a business. It may therefore be necessary for an SME to pursue litigation in certain circumstances in order to protect its IP rights and stop them being used by third parties.

In the past, SMEs have been put off pursuing litigation in the High Court due to the time and expense involved. Instead it has been easier for SMEs to focus resources on development and coming to market more quickly than their competitors. In particular there was very little incentive for SMEs or sole traders to become embroiled in an IP dispute with a larger, well-known company that was better able to absorb the time and financial cost of litigation. However that has changed recently with the reform of the Patents County Court.

On 1 October 2010, the Patents County Court (PCC) was reformed so that it could provide a streamlined and less costly procedure for litigating IP disputes. In particular the idea was that SMEs would no longer be deterred from innovation by the potential cost of the litigation required to protect their rights.

The reformed PCC has been operating for 2 years now. This article therefore appraises the success of this initiative and whether it has allowed greater access to justice for SMEs, start-ups and sole traders. In particular, this article considers the following:

How the PCC compares with High Court IP litigation How the PCC achieves its streamlined approach The damages and cost caps imposed on PCC litigation The types of cases considered by the PCC in 2012 The small claims track that was recently set up within the PCC Part 1 - PCC versus the High Court - An Overview

The name of the Patents County Court is misleading because the PCC is not just restricted to patents cases. The Court actually deals with all the same intellectual property issues as the High Court: patents, registered designs (UK or Community), plant varieties, trade mark and passing off disputes, copyright, unregistered designs, databases.

The PCC is intended for lower value and less complex cases, which can be heard using a streamlined Court procedure. The PCC is therefore considered suitable in the following circumstances:

One or both parties are an SME The trial will last no longer than 2 days No complex experimental or survey evidence is required The number of witnesses is small - cross-examination of witnesses is strictly controlled "The value of the claim falls within a certain limit (see Part 3 below) In terms of legal remedies, the PCC can grant the same remedies as the High Court, including interim and final injunctions, damages, accounts of profits, delivery up and disclosure, search and seizure (Anton Piller) orders and asset freezing (Mareva) orders. The latter two orders are only available if a Circuit Judge or High...