Intellectual property (IP) infringement claims in the UK can be brought in either the High Court
or the Intellectual Property Enterprise Court (IPEC). IPEC has a more streamlined procedure
than the High Court, as it contains a full-time specialist IP judge, which aids the development of
a consistent approach, and cases can often cost less than in the High Court.
As such, this streamlined procedure has improved access to justice for small and medium sized companies (as well as other
entities).
IPEC is split into two parts: the small claims track and the multitrack (see below).
Is the IPEC Suitable for the Claim?
Jurisdiction
IPEC can hear all types of IP disputes and also disputes in which IP is a major concern. Examples of cases heard in IPEC
include, but are not limited to, infringement of IP rights, amendments of patents, compensation for employees in respect of a
patented invention and breaches of confidence, such as misuse of trade secrets.
Value of Claims
The small claims track is suitable for claims where the amount in dispute is £10,000 or less. The multitrack is typically suitable
for claims with a value between £10,000 and £500,000. This means that generally, the maximum value of any claim that IPEC
hears is £500,000.
Restrictions on the Procedure
There are several specialist procedural and costs rules applicable to claims in IPEC, including the following general points to
note:
The statements of case (e.g. the particulars of claim, defence, etc.) are more detailed than in the High Court.
Trials in IPEC should last for two days or less.
IPEC is usually suitable for claims where both parties are small to medium enterprises. However, it is more the facts of the
case – rather than the parties – that are looked at in determining the suitability of being heard in IPEC.
The default position is that there is no disclosure of documents unless the court orders it; however, it can order disclosure of
“adverse” documents known by the parties.
IPEC has strict controls regarding the cross-examination of witnesses and will only permit it on topics where necessary.
IPEC is generally unsuited for very complex legal or fact-heavy disputes. For example, a breach of contract and trade mark
litigation claim with a competition law defence may be considered too complex for an IPEC judge and be transferred to the
High Court to be dealt with.
Cost recovery to recover legal costs is capped at £60,000 on the final determination of a claim in relation to liability, meaning
that the losing party will only have to pay the other party’s costs up to £60,000 (excluding court fees and wasted-costs
orders).
Available Remedies
IPEC can order all the remedies available in the High Court, including interim injunctions, damages and delivery up. For claims
allocated to the multitrack, interim remedies, including interim injunctions, asset freezing orders and search and seizure orders,
are available.
