Not so much epic, as IPEC - changes to the CPR for IP litigators

The Civil Procedure Rules (CPR) are changing as of 1 October 2013.  How will the rule changes affect IP litigators? The answer is: not in epic fashion, apart from the long-awaited name change for the Patents County Court, to make its name more reflective of what it does. There will also be changes to how that court is constituted.

The Civil Procedure (Amendment No 7) Rules 2013 (SI 2013/1974) detail all of the impending changes to the CPR Parts, while the Practice Direction ‘Making Document’, which effects the changes to the PDs, can be seen here.

The headlines about changes relevant to IP litigators are:

  • The Patents County Court (PCC) will be no more: In this much anticipated change, the PCC will become the Intellectual Property Enterprise Court (IPEC). It will be constituted as a specialist court of the High Court (Chancery Division).This causes changes to Part 63 and PD 63, as well as changes to other provisions not specific to IP, such as Part 30 (on transfer). Other additions are made to Part 63, such as updating references to the CTM Regulation (207/2009) and adding Community plant variety rights to the list of IP rights covered by Part 63.
  • Costs capping: PD 45 (about fixed costs) is changing. The costs capping numbers which were used in the PCC for multi-track cases will change when the IPEC begins. The new caps will only apply to cases launched on or after 1 October 2013, not to cases existing prior to that date. In general, the caps for each stage increase by around £500–£1000. The overall caps of £50,000 on liability and £25,000 for a damages inquiry or account of profits remain in place.
  • Defence deadlines: The deadlines are clarified. Amendments to Part 63 make it clear that the periods for filing a defence (42 days or 70 days) are applicable if the defendant has filed an Acknowledgement of Service.
  • Damages ceiling: The usual ceiling of £500,000 continues. However, Part 63 will change so that the ceiling will not apply ‘if the parties agree that the [IPEC] shall have jurisdiction to award damages or profits in excess of £500,000’. This reflects the statement which already exists in the PCC Guide, saying the parties could waive the cap by agreement.
  • Directions questionnaires (DQs): Part 26 is the general Part which provides for these. There was previously some doubt about the place of DQs in IP cases. New Part 63.8 begins by saying the parties do not need to file a DQ. However, from October, Part 63 will change to say that the court will send notices to the parties requiring them to file directions by whatever date is set out in the notice. As is usual, the parties should try to agree case management directions. If a claim is multi-track, Parts 26.4–26.10 (dealing with options for a stay application for alternative dispute resolution attempts etc.) do not apply.
  • Directions questionnaires in small claims track situations: If there is either a request for, or an objection to, a case being put on the small claims track in the IPEC, the parties will be sent a DQ, which they will have to file and serve within 14 days.
  • Appeals: While the IPEC is being constituted as part of the High Court, the changes to Part 63.18 specifically set out how the decisions of the district judges and enterprise judges sitting in IPEC will be treated. District judges will deal with small claims track cases and enforcement of any financial part of an IPEC judgment. For appeal purposes, the new rules state that a decision of an enterprise judge will be treated as a decision of a circuit judge hearing a specialist claim in the County Court. It also appears that an appeal from a district judge will be heard by an enterprise judge.
  • References to the CJEU: Some procedural changes on how to make a reference for a preliminary ruling (Part 68) will be made.
  • Amendments to Precedent H: There will be some extremely minor amendments to the Precedent H form for budgeting costs; this may or may not be a disappointment, depending on your experiences with Precedent H so far.

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