The New IPEC Guide

Author Basher Eyre, Licence CC BY-SA 2.0, Source Wikipedia Rolls Building

Jane Lambert

A new guide to the practice and procedure of the Intellectual Property Enterprise Court ("IPEC") was published yesterday and came into force immediately. It is intended to help users and potential users of the court by explaining how its procedures work and by providing guidelines where appropriate.

Small Claims Track Business outside London
An important announcement of the new guide is that from October 2019, there will be district judges in each of the six Business and Property Court centres outside London (Birmingham, Bristol, Cardiff, Leeds, Manchester and Newcastle) to hear matters in the IPEC small claims track. Appeals from decisions in the IPEC small claims track will be filed at the relevant appeal centre indicated in PD 52B. A judge of the multi-track will be made available to hear the appeal, either locally or in London, depending on the circumstances of the case and the judge's availability.

Proceedings outside London
Although all previous guides have stated that the enterprise judges are ready and willing to sit outside London, there has only been one trial outside London (see APT Training & Consultancy Ltd and another v Birmingham & Solihull Mental Health NHS Trust [2019] EWHC 19 (IPEC) (9 Jan 2019) and my case note of 21 April 2019).  The new guide discusses the arrangements for such proceedings in a bit more detail but makes clear that interlocutory matters will not be heard outside London. It reminds readers that case management conferences and other applications can be heard by telephone with the approval of the judge,

IP Pro Bono
There is a little more discussion of the IP Pro Bono scheme. The guide notes that the scheme was organized with the IPEC particularly in mind. The reference to the Citizens Advice Bureau and law centres as an alternative source of advice has been omitted.

Choosing the Right Court
There is a welcome new section on the appropriate court in which to launch proceedings.  Claimants are reminded that they can bring their claims in IPEC or elsewhere in the High Court and that if they choose to bring their claim in IPEC they must choose between the muti-track and the small claims track. Guidance is given on the factors to be taken into account in each case such as the parties' resources and the complexity of the claim.

An interesting paragraph in the new guide states:

"Parties may take the joint view that a case which would not normally be suitable for the IPEC should nonetheless be heard there. They are also free to agree that the £500,000 limit on compensation for infringement will be waived. In such a case the court will usually accommodate the parties’ wish provided that the trial will not take excessively longer than is usual for an IPEC trial." There is, of course, nothing to prevent assigned or other judges of the High Court from giving directions similar to those that are given in IPEC, especially as all courts are obliged to ensure that cases are conducted at proportionate cost. 

Launching Proceedings
The new guide explains how para 6 of the Practice Direction - Pre-Action Conduct and Protocols is to be applied in party-to-party correspondence.  It also warns of threats actions even though the scope for mischief from such actions has been lessened by the Intellectual Property (Unjustified Threats) Act 2017.

Other Contents
The rest of the new guide is similar to the 2016 one,  The paragraphs on transfers to and from the IPEC and allocation between the multi-track and small claims track that had previously appeared have been omitted from the "Procedure in the IPEC" section. That is probably because of the new section on choosing the right court.  New paragraphs on filing documents and court fees have been added to the "General Arrangements" section.  There remain appendices on contact details, a specimen CMC order and bundles.

Further Information
Anyone wishing to discuss this new article or the new guide, in general, should call me on 020 7404 5252 or send me a message through my contact form.