Running an IP dispute

The following IP practice note provides comprehensive and up to date legal information covering:

  • Running an IP dispute
  • Initial considerations
  • Taking action—options
  • Deciding to litigate
  • Choice of court
  • Full trial or interim injunction application?
  • Liability and Quantum
  • Experts
  • The Civil Procedure Rules and Guides
  • Appeals

Running an IP dispute

Initial considerations

When a practitioner receives an instruction from a client regarding an infringement of an IP right, it is good practice for the practitioner and client to discuss the initial considerations and formulate a clear strategy at the outset. Initial considerations might be to:

  1. consider the client’s IP portfolio and decide which IP right(s) might form the basis of the action. Sophisticated clients are likely to have a good understanding of the rights that they own and the steps that they can take to enforce them, but for less sophisticated clients it is good practice to take the time to ensure that they understand the IP rights at their disposal and what they would need to prove in order to succeed in a dispute. For more information, see Practice Notes: Introduction to patents, Introduction to trade marks, Introduction to designs, Introduction to copyright and associated rights and Introduction to passing off

  2. obtain evidence that the relevant IP right exists (whether registered or unregistered)

  3. check that the IP right is in force and subsisting (see the registers held by the UK Intellectual Property Office (UK IPO))

  4. check the client is the proprietor or exclusive licensee. (Even if the client considers that the ownership position is straightforward, it is always worth checking this because the IP right in question might be owned by

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