News Release issued by
the COI News Distribution Service on 30 September 2011
A new law comes
into force today that will give small and medium sized businesses
easier access to justice to protect their copyright and trade
marks. The Patents County Court (Financial Limits) Order (No.2)
2011 creates a clearer definition of which disputes involving
copyright and trade mark claims should be heard in the Patents
County Court (PCC) and which ones should go to the High Court.
The change will encourage more businesses to protect their
intellectual property and enforce their rights. Evidence presented
to the recent Hargreaves Review of Intellectual Property and
Growth indicated that small and medium sized firms are
dissuaded from enforcing IP rights because of the fear of high
court costs.
A new damages cap of £500,000 for all claims in the PCC means
small companies claiming damages up to that amount are less likely
to face a potentially more expensive trip to the High Court.
Minister for Intellectual Property, Baroness Wilcox said:
“A more accessible justice system will give companies greater
incentive to protect and enforce their intellectual property
rights. Making it easier for small firms and entrepreneurs to use
the legal processes will give them more time to concentrate on
business activities, innovate and support economic growth.
“These changes provide clarity on the legal processes, certainty
over the risks and give small enterprises the confidence to stand
on an equal footing with financially stronger companies.”
Previously, a business with a legal case worth less than £500,000
could face litigation in either court with unknown levels of
financial risk. An earlier Order, which came into force on 14 June
2011, had set the same limit in relation to patents and design cases.
The change in law will ensure that lower value, less complex
cases, which would typically involve small businesses, will
automatically fall within the jurisdiction of the PCC which has a
less costly and more streamlined process. Therefore the risk of
expensive disputes over where the case should be heard will be
reduced.
In the past some companies were put off protecting their rights
due to the uncertainty of how much it would cost. Supporting
evidence to the Hargreaves Review of Intellectual Property and
Growth highlighted that around one in five (17 per cent) of
small and medium sized businesses had given up attempting to
enforce their rights.
Support for a limit was expressed by small and medium sized
businesses during a full public consultation on the reform of the
PCC. The effectiveness of the damages cap will be monitored with a
formal review in 2014.
Notes to editors
1. The Intellectual Property Office (IPO) is within the
Department for Business, Innovation, and Skills (BIS) and is
responsible for the national framework of Intellectual Property
rights, comprising patents, designs, trade marks and copyright.
2. Its role is to help manage an IP system that encourages
innovation and creativity, balances the needs of consumers and
users, promotes strong and competitive markets and is the
foundation of the knowledge-based economy.
3. It operates in a national and an international environment and
its work is governed by national and international law, including
various international treaties relating to Intellectual Property
(IP) to which the United Kingdom is a party.
4. The Patents County Court (Financial Limits) Order (No. 2) 2011
came into force on 1 October.
5. This negative resolution Order, laid under the Courts and
Legal Services Act introduced a £500,000 limit to the value of a
broad range of IP claims, including copyright and trade mark
claims, which may be heard in the Patents County Court.
6. The earlier Patents County Court (Financial Limit) Order 2011
became law on 14 June 2011 through section 288(5) of the
Copyright, Designs and Patents Act 1988 and introduced the limit
in relation to patents and design claims. As required, that Order
had been debated in the House of Lords on 28 March 2011 and in the
House of Commons on 3 May 2011.
7. The limits were implemented following a report by Lord Justice
Jackson in his review of Civil Litigation Costs on 14 January
2010. One of the proposals was to reform the Patents County Court.
8. The Central London County Court is designated as a Patents
County Court.
9. The limit does not remove existing options for any SME, which
includes filing a claim in the High Court. Implementation adds
further possibilities to any potential IP litigation strategy for
all SMEs including those in the high tech business sectors. With
the exception of point 3 below, which is already available, the
following scenarios will be possible once the relevant measure
comes in to force:
A claimant may abandon any excess claim above the limit of
damages; in which case a Patents County Court shall have
jurisdiction to hear and determine the action, but the claimant
may not recover more than that amount (CDPA s288(2)).If the
parties agree that a Patents County Court shall have jurisdiction
in any proceedings, that court shall have jurisdiction to hear and
determine the proceedings notwithstanding any limit imposed under
section 288 (CDPA s288(4)).A claimant may still seek to have the
case heard under the Streamlined Procedure (Patents Court Guide
para 8.6) in the Patents (High) Court.
10. The Hargreaves Review of Intellectual Property and Growth,
and the Government’s response can be found at www.ipo.gov.uk/types/hargreaves.
11. Supporting documents highlighting enforcement issues of IP
can be found at www.ipo.gov.uk/ipreview.
12. For further information on the Patents County Court
(Financial Limit) Order, visit the IPO website www.ipo.gov.uk.
13. For further information, please contact Dan Palmer on 0207
215 5303 or e-mail comunications@ipo.gov.uk.
Contacts:
BIS Press Office
NDS.BIS@coi.gsi.gov.uk
Dan Palmer
Phone: 020 7215 5303
dan.palmer@bis.gsi.gov.uk