You have an IP dispute, but where should it be issued?

When faced with an intellectual property dispute that has signs of having caused significant losses, you may be faced with the prospect of issuing court proceedings. If a resolution through dialogue is not possible, you may have to turn to the courts to obtain an injunction or an award of damages.

Matters of this scale tend to require careful decision making on the part of the business’ leaders. Your legal team should be providing you with the right information to enable you to make those tough calls under pressure.

Central among these is likely to be the correct forum to issue your claim. In England & Wales, the three options as to where to issue the claim are:

• The High Court, Chancery Division (IP list)
• The Shorter Trials Scheme in the High Court
• The Intellectual Property Enterprise Court

The identifying characteristics of each option can seem overwhelming and this can cloud decision making. However, the choice between the different routes can have a significant impact on achieving your objectives in a dispute.

High Court

The High Court is where you may decide to issue your claim if the claim value is significant, and the matter is complex. If there are any heavily factual issues, that require either extensive disclosure or witness evidence, the High Court is likely to be the most appropriate option. There are no limitations on the financial remedies you can obtain, and your cost recovery is not limited by scales or caps.

The flipside of this is that it is also the costliest option of the three, and your exposure to the other side (if you are liable for their costs), is similarly unlimited too. The work that is required at the various stages is extensive, and the issues in the case may necessitate this.

Other reasons to issue a claim here may include complex applications that may be necessary in the claim. If you need an interim injunction application to stop an infringer immediately, you have the guarantee that you can access a good proportion of your costs.

Also important to bear in mind is that this avenue will take the longest time to achieve a judgment in the case.

IPEC

The IPEC is the best option if you wish to manage the costs of the claim carefully, and the value of the claim does not seem to exceed £500,000. Value is difficult to assess at the outset of a claim, but there are ways to make an educated estimate of how much loss your business has suffered.

The fact that costs are awarded on a set scale acts as a cap on your cost exposure to the other side, but it also means that your recovery is limited. If you spend significantly more than the caps afford, you would not be able to claim that from the other side unless limited circumstances apply.

The IPEC is not suitable for cases on the highest end of the scale of complexity, such as those that require examination of several witnesses, heavy disclosure of documents, or significant expert evidence.

It is also unsuitable where you might require an interim application such as an interim injunction, or a freezing injunction. The IPEC scale of costs sets the upper limit at £3000 for applications, and where complex applications go to a hearing, you can end up spending more than ten times this amount at least.

At the moment, the IPEC is the middle ground in terms of expediency with trials taking place eighteen months from issue in some cases.

Short Trials Scheme

The Shorter Trials Scheme is best suited for claims that require expediency above all else. Trials should take place ten months from the CMC, which usually equates to twelve months from issue. Decisions are delivered within six weeks.

The expediency also means that some more onerous aspects of High Court rules are done away with, including extensive disclosure or witness statements, and long trials. This in turn can mean that costs are less than the traditional High Court route.

There are also no special limits on the costs you can recover, as they are awarded on standard High Court rules. Similarly there are no limits on the financial remedies you can access in the claim. However, cases that are heavily factual, or require significant digging in terms of documents from other parties, are unsuitable.

This means that whilst your claim may not be limited, you will need to be sure that the shortened STS procedure allows you to properly access the remedies you are seeking.

Your case

The best suited forum largely depends on the characteristics of your claim, and the objectives you seek to achieve. A high value, complex and heavily factual claim is best brought in the High Court on the Chancery List. However, if you want a speedy outcome through the courts, the Shorter Trials Scheme could be the best option. Some claims are more straightforward and of lower financial value than others, and the claimant (or defendant) may want to prioritise higher certainty on budget. These are best heard in the IPEC. A bespoke approach to each claim is required when making the decision.

If you or your client are bringing or facing an intellectual property infringement claim, contact Lakmal Walawage or any other member of the Edwin Coe Intellectual Property team.