Intellectual property legal system overhauled for SMEs

Wayne Beynon
March 13, 2013

A small claims track has been introduced for SME Intellectual Property cases, explains Wayne Beynon, one of a team of Media & IP lawyers at Cardiff and London based law firm, Capital Law.

The close of 2012 saw the launch of the new ‘small claims track’ for intellectual property cases.

The new process, introduced by the Patents County Court (PCC) is intended to speed up the legal process and make it cheaper and easier for SMEs to enforce their intellectual property (IP) rights.

The small claims track will provide copyright and trade mark holders the option of pursuing basic IP disputes via an informal hearing, without the requirement of legal representation from an IP lawyer.

The small claims track is expected to significantly reduce the cost of pursuing copyright and trademark infringement cases, allowing SMEs to protect their brand and their creative ideas via a defined legal channel that previously might have been viewed as being too costly and time consuming.

One of the most significant aspects of the new process will be the ability of rights owners to bring cases to the PCC without the worry of being liable for their opponent’s costs if they lose – removing one of the major inhibiting factors to SMEs bringing copyright and trademark infringement claims.

A cap on damages of £5,000 has also been set, ensuring the small claims track is only utilised for low value claims, as opposed to claims of up to £500,000 in the multi-track of the PCC and unlimited damages in the High Court.

In a further attempt to make IP enforcement more affordable, many of the procedural formalities associated with civil claims have been sidelined. The fast track process is intended to be a relatively informal affair without the need for parties to be legally represented.

There is no doubt that, historically, rights owners have been deterred from issuing Court proceedings to enforce their IP rights due to the expense involved in funding a claim and the risk of having to pay their opponent’s costs if they lose. It will be interesting to see how many of those who previously took the decision not to enforce their rights for these reasons now seek to follow this more affordable process.

It would not surprise me if there is an initial surge in the number of copyright and trademark owners seeking to obtain a cost effective judgment through the new PCC small claims track.

The introduction of the PCC small claims track is the latest addition to a catalogue of reforms that the Government has implemented to simplify and streamline court procedures. Additionally the Intellectual Property Office (IPO) now provides numerous alternatives to court action for resolving IP disputes, including hearings before an IPO tribunal, or using the IPO’s mediation services. The intention being that Claimants start viewing formal Court proceedings as a last resort.

The new PCC small claims track offers another important stride towards IP laws that are fit for the ever evolving digital and economic age. The new laws widen access to a justice system that has remained a closed shop for many on issues of IP enforcement.