IPEC - Intellectual Property Enterprise Court
- Himanshu Dasare
- Updated: Fri, 25th Nov 2016
In the world of intellectual property where the windows of opportunity can be overtaken quickly, generally litigation is best avoided. Settlement is encouraged. But, sometimes court action is needed to find the path to resolution. We have the expertise you need in dealing with the specialist court for intellectual property infringement – the Intellectual Property Enterprise Court, IPEC.
Our intellectual property dispute services for IPEC include:
We help intellectual property owners who are either suffering from or are accused of IP infringement. What all our clients have in common is the desire to protect their position. We work hard to achieve their goals. We are specialists in dealing with intellectual property infringement and solve cases for many different types of businesses.
The process most likely to achieve success
The threat of intellectual property litigation in IPEC should bring both parties to the negotiating table. Over the years we have found the following approach to be effective in providing the solutions to resolving intellectual property infringement disputes.
Steps we take you through
The steps we usually work through to encourage a quick solution are broadly as follows:
- Take a hard and honest review of the evidence of infringement – if your case is weak we recommend you face facts early and adapt your strategy accordingly.
- Pinpointing the commercial levers likely to encourage settlement.
- Plan a road map setting out the timetable which forms the basis of the case plan and tactics.
- Maintain focused and concise without prejudice discussions. Experience tells us that keeping the pressure up, showing determination and presenting a well argued case will push the other side into retreat more quickly.
- Remember attempts to settle are not a sign of weakness. It shows commercial acumen. In the IPEC costs and damages are capped. You cannot use the threat of deep pockets against your opponent.
How to minimise cost and achieve results
IPEC along with other courts encourages the parties to seek ways to resolve disputes outside of court. If you arrive at IPEC without being able to demonstrate attempts to resolve the problems the court will take a dim view.
Many claims are lodged at the IPEC court. Claims in IPEC are usually dealt with within a year. But, many claims do not make it to the IPEC court. This is because the claims are settled and withdrawn before the hearing date.
We find that early settlement before the case reaches IPEC are more easily achieved by:
- Skilled negotiation;
- Mediation if negotiation is not advancing the case quickly;
- Use of experts to encourage a reality check.
We negotiate settlements frequently making us fluent negotiators. Preparation is needed to build the tactics on which negotiations are planned. We anticipate arguments before they are made and are rehearsed. It is likely that we will have dealt with similar situations before and will use that experience to your advantage.
For most issues taken to court, litigation is a win-lose paradigm. Alternative dispute resolution enables you to explore creative win-win solutions. One form of alternative dispute resolution is mediation. The IPEC encourages parties to consider mediation as it offers the following advantages:
- Cost and time savings;
- An opportunity to negotiate a settlement agreement;
- An opportunity to conduct the matter in private. The outcome of the matter can be kept private and confidential, which most companies find beneficial.
Example of how mediation can be used successfully
An example would be where the copyright owner agrees to cease litigation if the infringer pays a monetary sum and agrees to a licence agreement to regulate future affairs. This way, the infringer will still be able to use the copyright, but it will also ensure that the owner is not losing revenue and can still monitor how their copyright is being used.
In a court case this may not be possible and the judge cannot order such a resolution – alternative dispute resolution methods permit settlements of this nature and we take this into account when preparing our advice.
Using experts to help resolve intellectual property disputes
Instructing an expert or a joint expert from the start can help resolve disputes. An impartial view can help both parties understand the issues in disputes. Using an expert has the following advantages:
- Paves the way for settlement – it will allow the other part to see a different point of view
- Maintains business relationship
- Quicker than going to court
- Less costly than court procedure
Benefits of IPEC
The Intellectual Property Enforcement Court has been set up especially for the enforcement and protection of intellectual property assets. To use IPEC to its maximum advantage you need to know the rules and procedures of IPEC which is where we step in.
The advantages of using the IPEC compared to other courts such as the High Court include:
Cases are usually dealt with within a year. This is a lot shorter compared to the High Court which usually takes around 2 or 3 years.
The process in the IPEC is more strictly managed. Hearings last a maximum of 2 days therefore costs are a lot less compared to the High Court. Costs in the IPEC usually range from around £5,000 to £150,000 depending on the complexity of the IP dispute. It is not uncommon for costs in the High Court to reach £500,000.
The IPEC can make decision over community IP rights such as community design rights. They can also order a pan-European injunction.
Lower financial risk
In respect of liability, there is an overall cap of £50,000 on the amount of costs the losing party can be ordered to pay to the winner. In respect of account of profits, there is a further cap of £25,000. The maximum amount of damages and/or account of profits that can be claimed is limited to £500,000.
Cases in the IPEC are heard by judges who specialise in IP disputes.
Active case management
This minimises frustrating tactics from the other side.
Wide scope at IPEC
The IPEC has jurisdiction over all intellectual property rights including:
One tactic to encourage resolution of the IP dispute, is to file a claim in IPEC to focus the minds and establish a timetable.
Appeals from IPEC
Appeals from IPEC are made to either:
- The same court – case will be reviewed by another judge – this is usually if it is a small claims case
- The Court of Appeal
- The Chancery Division of the High Court.
Small Claims track in IPEC
IPEC does operate a small claims track for claims of up to £10,000.
Letters before commencing litigation in IPEC
We will always send a letter to the other side before commencing litigation in IPEC – known as a letter before action. Letters before action are a requirement under the IPEC rules and part of the push applicable in all courts to settle disputes outside of court.
The benefits of a letter before action
- The letter before action will set out your case, and identify the matters in dispute – provides clarity.
- The letter before action will give the other party a chance to settle the case within a set time frame – sets a timeframe.
- The letter before action will show the court that you have attempted to settle the case without litigation. This will help to protect your position when it comes to awards of costs that may be made by IPEC.
Security for costs
We will look to see if the other side has the money to pay for the damages. If we find out that that they will not be able to pay, we will apply to the court to get security for costs.
Powers of IPEC
The maximum cap on recoverable costs means you and your opponent have to be proportionate with cost. If a resolution out of court cannot be achieved, the IPEC can issue a full range of orders such as:
- Undertakings: the parties promise to take agreed steps;
- Injunctions: the court orders that a party must refrain from actions – usually the sale of goods which infringe intellectual property rights; and/or
- Damages: restitution of lost profits.
Situations when the IPEC is not suitable
The following factors can be indicators that the claim is not suitable for the IPEC:
The IPEC does not deal with extremely complex claims. A claim would be considered as complex if it involves, substantive cross examination of witnesses and experts and a trial that would last longer than 2 days.
Costs at the IPEC are capped. If due to the nature and complexity of the action, legal costs are likely to exceed £50,000 then it would not be suitable for the IPEC.
If the likely damage and/or account of profits will exceed £500,000 it is better suited for the High Court
We will always look at the most appropriate litigation funding structure for your case. In particular, we offer:
- Flexible billing arrangements as an alternative to invoicing time at hourly rates;
- DBA’s (“Damage Based Agreements”) for a small number of cases. This is where we take a fixed percentage of any damages recovered, capped at a maximum recovery of 50 per cent of damages;
- Negotiated fixed fees for pre-litigation preparatory work and, once litigation starts, for certain stages of the litigation process; or
- CFA’s (“Conditional Fee Arrangements”) for a small number of matters on a case-by-case basis. Our offer is based on our assessment on the merits of a claim and the likelihood of recoverability of costs.
Our intellectual property dispute IPEC track record
Most of our cases settle before they reach the IPEC. Where negotiations fail, which is very rare, we bring and defend intellectual property rights disputes in the IPEC. We have:
- Used an IPEC claim as a catalyst for settlement where our client possessed design right documentation recording originality of merchandise. Our client settled the matter and subsequently granted a licence to the infringer for the design right’s use – stimulating future exploitation and gaining a revenue stream.
- Obtained an immediate interim prohibitory injunction on behalf of a registered trade mark holder in toy distribution markets to prevent detriments to the holder’s goodwill and market share. The interim injunction was necessary in order to stop haemorrhaging of profits.
- Defended claims of trade mark and passing off infringements on behalf of a household publishing company. We successfully resisted the action and succeeded on a counterclaim for trade mark invalidation on the ground that the registered trade mark was not validly registered.
We understand what drives intellectual property disputes and litigation. We use our market know-how to give you leverage over your opponent. We use the IPEC’s rules and procedures to your advantage and where possible seek to settle a claim without incurring unnecessary costs. Intellectual property agreements must be reviewed and revised periodically in light of developments in technology. We can help you tackle the fast moving world.