Recent developments in the English Patent Courts

By Neil Jenkins, Audrey Horton



On 1 October 2013, the Patents Count Court (PCC) was reconstituted as a specialist list in the Chancery Division of the High Court to form the Intellectual Property Enterprise Court (IPEC). The IPEC has a broad intellectual property (IP) subject matter jurisdiction which includes trade mark, design, copyright and other intellectual property rights, as well as patents. The IPEC may also hear proceedings which although primarily concerned with IP also concern other related subject matter. Like the PCC before it, the IPEC is intended to provide a less expensive jurisdiction with a more streamlined procedure than the Patents Court for IP actions; damages or account of profits are capped at £500,000 and recoverable costs are capped at £50,000.  The more streamlined procedure, particularly the limitations on the extent of any disclosure and also the evidence that can be adduced at trial, combined with more pro-active case management and strict time limits on the length of any hearing, is intended to ensure a speedy (and hopefully cheaper) resolution of IP disputes.

Judicial movement

In December 2013, HHJ Richard Hacon became the new permanent presiding judge of the IPEC. In May 2013, his predecessor Colin Birss had been appointed to be a High Court judge assigned to the Chancery Division; along with Richard Arnold he is one of two specialist patents judges assigned to patent actions with a technical complexity rating of 4 or more. As part of the Chancery Modernisation Review led by Lord Justice Briggs, a third patent judge has been proposed but not yet appointed.

In 2013, Lord Justice Floyd and Lord Justice Vos were appointed to the Court of Appeal. Along with Lord Justice Kitchin, they will normally be selected to hear appeals in patent actions against orders made by the first instance courts (the IPEC or the Patents Court).

Speedy trial

Since the mid-1990s, it has been an aim of the Patents Court to provide litigants with a jurisdiction in which they can expect actions to be brought to trial within 12 months of commencement. In the past couple of years, the time elapsing between commencement of the claim and the trial has been increasing. Various steps have therefore been taken to ensure that the speed within which cases can be expected to come to trial, which is recognised as one of the advantages of the jurisdiction, is not lost.

A feature of litigation in the IPEC, namely a fixed-length trial, has been trialled (as a pilot scheme for some cases) in the Patents Court from 1 May 2014. A fixed-length trial is (as its name suggests) required to be completed within the period allocated to it. As a necessary corollary to the imposition of a trial of fixed length, the Patent Judges employ their enhanced case management powers, introduced on 1 April 2013 as part of the Jackson Reforms to civil procedure, in order to ration the parties' use of the court time and resources.

In January 2015, Mr Justice Arnold, as the senior of the two Patents Court Judges, announced that to achieve the long standing aim of patent actions being brought to trial (where possible) within 12 months of the claim being issued, a number of steps would be taken including:

  1. the use of more Deputy High Court Judges to hear patent cases;
  2. greater use the court's case management powers to set limits on the length of trials and at the same time allocate fixed periods of time for the parties to cross-examine witnesses and argue their case orally at trials.