IPO Review of Enforcement: Call for Evidence

Intellectual Property Office, Newport
Reproduced with kind permission of the Intellectual Property Office











Jane Lambert
 

In Protecting creativity, supporting innovation: IP enforcement 2020  which was published on 16 May 2020, the Intellectual Property Office promised to review periodically "existing methods of legal recourse for IP infringement to ensure they are effective, consistent, and proportionate."  On 5 Oct 2020, it announced a call for evidence from IP rights owners to inform that review.   The closing date for submissions is 11:45 on 2 Nov 2020.

There are three key themes for the review; 
  • the cost of legal challenges, 
  • how accessible and effective the judicial process is, and 
  • improvements to the Small Claims Track of the Intellectual Property Enterprise Court. 
There is also a discussion on whether to include registered designs disputes within the jurisdiction of the Small Claims Track.

The Introduction states that those topics have been chosen by a working group chaired by Professor Sir Robin Jacob of the Institute of Brand and Innovation Law at University College London.  That group includes representatives of all the professions that provide intellectual property services and includes Professor Mostert of King's College with whom I collaborated last year on a project for the WIPO (see Another Side of the WIPO 5 Sep 2019) and an instructing solicitor.  They identified the issues mentioned above plus online infringement.  That last topic will be addressed through other initiatives.

The Cost of Legal Challenges notes that many IP rights owners are deterred from enforcing their rights by the costs of litigation.   Rights owners are invited to respond to the following questions:
  1. "What costs have you or your business incurred when protecting your IP right(s) from infringement? When you respond, please include the type of IP right(s) you were protecting. What was the outcome of the case?
  2. Have you avoided making a claim or pursuing a case when protecting your or your business’ IP? If so, please explain your reasons. For example, was it because of the costs involved?
  3. Which costs did you consider when deciding what action to take to protect your IP? For example, the cost of the time spent dealing with the infringement or the possibility of paying an expert?
  4. Were you aware of or did you consider the use of protective measures such as IP insurance? For example, BTE (before the event), ATE (after the event), legal expenses insurance, or free legal advice through services like the Citizens Advice Bureau or IP pro bono?
  5. Is there a reason you did not use protective measures such as IP insurance?"
Respondents who have incurred costs from defending against action are also asked:
  • "What costs have you or your business incurred when defending an accusation of alleged infringement? When you respond, please include the type of IP right(s) you were accused of infringing. What was the outcome of the case?
  • Could you provide some information on how you funded the case? For example, debt, using free legal services or insurance."
The paper mentions pro bono schemes such as those offered by IP Pro Bono and Advocate and asks:
  1. "Have you considered or used IP pro bono or similar services to help with the costs of seeking legal advice? If so, please provide details of your case (this can be anonymised) and your overall experience.
  2. Did anything prevent you using these services? Please provide details.
  3. If you are aware of the service but have not used it please explain why not? For example, were you unable to get a referral to the IP Bar pro bono service?"
As a practitioner who has always done a lot of pro bono work, I have to stress that pro bono schemes can never be more than a very temporary and limited solution to the sometimes prohibitive cost of enforcing IP rights.  For a very large number of reasons (not least of which has been the government's volte-face on the UK's participation in the Unified Patent Court), IP has become the Cinderella of business law.  A few practitioners may earn good fees from FRAND or second medical disputes but most IP practitioners have to make do with trade mark oppositions, entitlement disputes and similar matters for start-ups and SMEs who can only be charged so much.

Possibly the most interesting consultation paper is on Accessibility and effectiveness of judicial processesIP owners are asked:
  1. "Do you have experience of the judicial process? If you do, please provide details of your specific IP case. Please include whether you found the system easy to understand and use.
  2. Were you aware of the different routes available to take to pursue the alleged infringement?
  3. When your product or creation was being infringed, did you feel there was easy access to the court system? Was there easy access to information on which route would be the most suitable? Please explain what happened in your case."
The consultation paper mentions ADR schemes but omits three very quick and cost-effective dispute resolution schemes:
Respondents are asked:
  1. "Have you stopped infringement of your rights without taking the infringer to court?
  2. Did you use an alternative dispute resolution (such as mediation or arbitration)? If so, please provide details of which service you used, your experience and the outcome.
  3. How did you find out what route to take to enforcement?
  4. What was your experience of using the chosen method?"
When it was established the Small Claims Track of the Intellectual Property Court was intended to be a quick and cost-effective forum with a simplified procedure that would allow parties to dispense with the services of a lawyer or patent or trade mark attorney.   That is not how it has turned out in practice.   It is in some ways trickier to navigate a case through that tribunal than through the Multitrack.   A number of improvements are suggested in the paper such as interactive online forms.  Progress on those lines is to be welcomed.

In the meantime, IP owners are asked:
  1. "Have you used the small claims track? If you have, please describe what happened in your case? Did you find the available guidance easy to understand without the need to seek legal advice?
  2. Have you looked into using the small claims track and decided not to use it? If so please provide details of what happened and your reason for not using the service.
  3. Would providing examples of cases have helped when considering whether to use the small claims track and your understanding of the process?
  4. If you have used the small claims track would you use it again for a future infringement case? Please explain your reasons for your decision not/to use the small claims track again?
  5. Have you had experience of using the CE file application service to submit an IP claim? If so, please provide details of your experience, including whether it was submitted to one of the regional courts hearing SCT cases."
The paper also suggests statutory damages for IP infringement regardless of the claimant's actual loss or damage. Canada for example allows damages of between C$500 to C$20,000 per infringement.   I have to say that I am rather alarmed by the proposal because it could result in considerable injustice where there has been a trivial or inadvertent infringement.   It has to be remembered that IP law does not exist solely for the benefit of the intellectual asset owner.   It is intended to strike a balance between the interests of such owners, consumers and competitors.   On the question of statutory damages, respondents are asked:
  1. "Have you had a case that resulted in damages being awarded? If You have, please explain on what basis the damages were awarded?
  2. Do you think the introduction of a system such as statutory damages would help reduce barriers (if you believe there are any) for pursuing or defending legal action?
  3. Do you consider that this could have a negative impact on the system? For example, an increase in false claims?
  4. Do you think that there is a way that any negative impact of the implementation of statutory damages could be reduced? For example, the inclusion of a clause."
A specific proposal that deserves attention is the proposal to include registered designs cases within the jurisdiction of the Small Claims Track (see Additional: Inclusion of registered designs within the scope of the small claims track (SCT) of the Intellectual Property Enterprise Court (IPEC).  Respondents are asked:
  1. "Have you previously used the small claims track to enforce an unregistered design? If so, please provide details of your experience.
  2. Have you been involved in a dispute over a registered design that would have been suitable to be heard in the IPEC small claims track? If so, please provide details of your experience and the approximate damages sought.
  3. Have the costs associated with legal action in IPEC’s multi-track prevented you from enforcing your registered designs? If so, please provide details and costs
  4. If registered design cases could be heard in the small claims
I would welcome not just the inclusion of registered designs cases within the jurisdiction of the Small Claims Track but also patents, registered designs and semiconductor topography cases.   Not every patent or design case would be suitable for the SCT but some are.   There would have to be very right case management to weed out cases that are unsuitable and maybe the district judges who hear the cases should be drawn from practitioners with experience of patent law.   They should not be too difficult to find from the IP Bar, IPLA firms and the patent and trade mark attorneys' professions.

As I observed in  Registered Designs - BVG Group Limited v Magee 8 Oct 2020 NIPC Law, design law in the UK is over-complicated because of the way in which the Registered Designs Act 1949 has been overhauled by the Copyright, Designs and Patents Act 1977 and Directive 98/71/ECThe design of goods is an increasingly important intellectual asset.   It is high time that there was a codification of our design law.

Anyone wishing to discuss this article or the topic should call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

Comments

  1. With regards to the concern that statutory damages may cause injustice where infringements are trivial or inadvertent. I would respectfully disagree with those concerns. Small infringements may be considered trivial to the infringer, however many small infringements add up and creatives can be in the position of loosing the majority of their income from such infringements. Furthermore, if the infringement is really very minor then it is unlikely anyone would set out on the arduous task of bringing a claim. The Canadian statutory Damages has a minimum of 500 Canadian Dollars, or around 300 GBP. Its unlikely anyone would contemplate 50 hours of stressful and difficult litigation work for something trivial. ( 50 hours work being my estimate of bringing an average case from start to a hearing. My last one was over 60 hours ) It works out at 6 GBP per hour in monetary terms and the damage to ones health and family life is incalculable.
    With regards to infringements being “inadvertent”, my experience is all or almost all of my infringers have claimed the infringement was inadvertent. In the case of a photograph copied from one website and published unlawfully on another, it is not possible to be inadvertent. It requires that the image be copied. In my case my website is protected by a right click disable, so copying needs to be done with a screenshot tool, which is a tool deliberately designed to bypass website content protection security. The image must then be prepared and sized to the desired end use and uploaded to the infringing website. This is not possible to do inadvertently. Furthermore evidence has frequently revealed that the defendants have removed the copyright notices which again shows the infringement is deliberate and wilful rather than inadvertent as claimed. In my case, many if not most of my defendants have been large companies using professional IT workers and their claims that the infringement was inadvertent lack any credulity.

    I agree that there must be a balance between creatives and others, however currently the balance lies far too much in the favour of the infringer which is why the vast majority of users of my creative works are doing so unlawfully and without payment to me. Infringers have a low chance of detection and an even lower chance that they will be made to pay. Statutory damages would go some way towards redressing this. Crime should not pay.

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