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

1. Enforcement of
Intellectual Property
Rights
Jane Lambert
QualitySolicitors Jackson & Canter
Wednesday 23 May 2012

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. 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. What happens if an IPR is
infringed?
• 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. 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. 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. 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. 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. Proceeding in any court but
the 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. Proceeding in any court but
the 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. Proceeding in any court but
the 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. Proceeding in any court but
the 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. Proceeding in any court but
the 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. Proceeding in any court but
the 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. Proceeding in the Patents
County Court
New rules for came into force on 1 Oct
2010 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. 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. 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. Any Questions?
Jane Lambert
NIPC
The Media Centre
7 Northumberland St.
Huddersfield
HD1 1RL
0800 762 0055
www.nipclaw.com