The court was asked whether the case should be transferred from the Patents County Court to the High Court Patents Court.
Birss HHJ identified the relevant factors: ‘the points to consider are:-
i) the financial position of the parties (s289(2) 1988 Act). This includes but is not limited to considering whether a party can only afford to bring or defend the claim in a patents county court (para 9.1(1) Practice Direction 30). This factor is closely related to access to justice. The Patents County Court was set up to assist small and medium sized enterprises in enforcing and litigating intellectual property disputes. Guidance on the nature of these enterprises can be found from the Commission Recommendation 2003/361/EC.
ii) whether the claim is appropriate to be determined by a patents county court. This involves considering:
a) the value of the claim, including the value of an injunction and the amount in dispute. (Para 9.1(2)(a) Practice Direction 30 and CPR 30.3(a)) ,br />b) the complexity of the issues (para 9.1(2)(b) Practice Direction 30 and CPR 30.3(d))
c) the estimated length of the trial. (Para 9.1(2)(c) Practice Direction 30). Related to this is CPR 30.3(b) – whether it would be more convenient or fair for hearings (including the trial) to be held in some other court.
iii) the importance of the outcome of the claim to the public in general (CPR 30.3(e)) albeit that a case raising an important question of fact or law need not necessarily be transferred to the Patents Court (s289(2) 1988 Act).
A factor which does not play a role is the one in CPR Pt 30.3(c) (availability of a judge specialising in the type of claim in question) since specialist judges are available in both courts.
Once those factors are considered I must bear in mind what sort of cases the Patents County Court was established to handle and that its role is to provide cheaper, speedier and more informal procedures to ensure that small and medium sized enterprises, and private individuals, were not deterred from innovation by the potential cost of litigation to safeguard their rights. The decision turns on what the interests of justice require, taking into account both parties interests and interests of other litigants.’
Judges:
Birss QC HHJ
Citations:
[2010] EWPCC 14, [2011] FSR 13
Links:
Statutes:
County Courts Act 1984 42, Copyright Designs and Patents Act 1988 289(2)
Jurisdiction:
England and Wales
Cited by:
Explained – Comic Enterprises Ltd v Twentieth Century Fox Film Corp PCC 22-Mar-2012
Birss QC HHJ explained his comments in ALK-Abello regarding the criteria for transerring a case to Chancery Division: ’21. This case is one in which access to justice for SMEs is raised squarely. It is the key element of Miss McFarland’s submissions . .
Cited – 77 Ltd v Ordnance Survey Ltd and Others IPEC 15-Jun-2017
The court heard an application to transfer the case to the Chancery Division.
Held: Given the different levels of resources available to the parties, a transfer was refused. . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, Litigation Practice
Updated: 26 August 2022; Ref: scu.425825