IP disputes: IMPACT guide to the essentials

Introduction
This is a guide to IP disputes in the UK, put together by the IMPACT team.

The law
In the UK, the civil law is made up of:

• Legislation made by Parliament
• Decisions of the Courts
• European Law

There is no Civil Code and the Courts have to follow the decisions on the same legal points made by Courts of a higher status (for example, the County Court follows decisions from the High Court). In some cases, the Courts have to follow the decisions of a Court of the same status.

The courts
We've already produced a guide to the courts that handle IP cases in the UK.

About lawyers
There's also a guide to lawyers that you can read.

Important steps before proceedings

1. Protocols
   Protocols set out certain procedures that must be followed to encourage the exchange of information between the parties to ascertain whether proceedings can be avoided.
2. Letter of Claim
   Notifies the Defendant of the Claimant’s intention to make a claim against him should include all the information the Defendant will need to understand the claim against him.
3. Letter of Response
   This is the Defendant’s response to the Letter of Claim stating whether, or to what extent the claim is accepted or rejected.
4. Alternative Dispute Resolution
   The Court will also expect the parties to provide evidence that they have considered alternative means of settling their dispute.

Proceedings

1. Starting Proceedings
   Before the trial of a case, the parties formally set out their cases in documents collectively known as Statements of Case. These are the documents described in the rest of this section.
2. Claim Form
   This starts the action stating who has started the action (the Claimant) and against whom (the Defendant). It will also contain a concise statement of the nature of the claim.
3. Particulars of Claim
   If the Claimant has only been able to briefly set out its claim in the claim form, then the Claimant sets out the claim in detail in the Particulars of Claim.
4. Defence and Counterclaim
   A Defendant who wishes to defend all or part of a claim must file a Defence. The Defence sets out the Defendant’s case against the Claim Form. If the Defendant has a claim against the Claimant it can include the claim by way of a counterclaim.
5. Reply and Defence to Counterclaim
   The Claimant can comment on the Defence in a Reply, but if the Defendant does not counterclaim, there is no need to serve a Reply as the Court presumes that the Claimant disputes the Defence.
6. Request for Further Information
   If one party wants to know more detail about the other side's claim, its solicitors will serve a request for further and better particulars.
7. Statement of Truth
   In Court proceedings, Statements of Case (such as witness statements) must contain a Statement of Truth. You must sign this Statement of Truth and it is imperative that you ensure that the facts that you have given us and/or the documents you have provided to us are correct and true. If this is not the case, you risk being in contempt of Court and potentially face imprisonment.

Applications & Hearings Before Trial
In most cases, the parties will ask the Court to decide some questions before trial (such as Directions) or to issue an injunction.

1. Interim Injunctions
   These are applied for in most IP cases. There purpose is to ask the Court to order the Defendant to stop the acts complained of until the case has been decided at trial.
2. Search Orders
   Made without the Defendant's prior knowledge, these order the Defendant to let the Claimant’s solicitors search for and seize evidence that the Defendant might otherwise dispose of or conceal.
3. Freezing Injunctions
   A Freezing Injunction is made to prevent the Defendant from disposing of its assets and defeating the Claimant’s chance to recover damages or costs.
4. Procedure for Interim Injunctions
   It is normal to send a letter before action to the Defendant except in cases where there is a need to act with extreme urgency or where the Claimant wants to apply for a Search Order. The purpose of a letter before action is to give the Defendant chance to concede without the need to issue proceedings.

Disclosure of Documents
Disclosure is the stage of an action where each party has to disclose to the other all of the relevant documents that are, or were, in its possession except those classed as “privileged”.

Evidence
The Court rules require the parties to disclose their evidence to each other in advance of the trial. The exchange of evidence usually takes place in two forms:

1. Witness Statements
   Each witness that a party wishes to call at trial will usually sign a statement. The statement must include all the evidence a person wishes to give at trial.
2. Expert Evidence
   Where the matters in issue between the parties involve technical aspects, each side will usually instruct their own expert.

Getting Ready for Trial
Once witness and expert evidence has been exchanged, the Claimant’s solicitors will prepare the case for trial. This includes preparing the bundles of documents to be used by the Judge during the trial.

Trial
This usually takes the following order:

• Claimant’s barrister's opening speech
• Claimant’s Witness(es) are called
• Defendant's barrister’s cross-examination of witness(es)
• Claimant’s barrister’s option to "re-examine" the witness(es)
• Defendant's witness(es) are called. The same process of examination takes place.
• Defendant's barrister will comment on the evidence and set out the Defendant's case.
• Claimant’s barrister’s closing speech.
• Judge will give his decision. However, Judge may "reserve judgement" until he has had the opportunity to analyse the case fully. The Judge then gives a written judgement.
• Following judgement, the barristers for the parties will put their arguments to the Judge as to the wording of the final order and the issue of costs.

Remedies
If the Claimant is successful at the trial then the usual remedies it will ask for are:

• A permanent injunction to prevent future infringements
• Damages for past infringements (or, at the option of the Claimant, an account of the Defendant's profits)
• Delivery or destruction of infringing articles
• Payment of its legal costs

Costs
In the UK, the Court will usually order the losing party to pay a proportion of the winner's legal costs. In certain cases, the Court will order that the Claimant in an action pay an amount into Court as security for the Defendant's costs.

After judgement, the Defendant may pay the damages and costs awarded voluntarily. However, if it does not then there are various options available for enforcing the judgement.

Appealing against Court Orders

1. Interim Matters
   Whenever a Master makes a decision on an interim matter then either party may have a right of appeal to a Judge.
2. Trial
   After the trial of an action, the unsuccessful party may have a right of appeal to the Court of Appeal.
3. Court of Appeal
   In cases involving important points of law or matters of public interest, there may be a further right of appeal to the House of Lords.

Conclusions
Being involved in disputes and litigation can be very stressful. We hope that this guide has helped to outline the different steps and issues that may arise during litigation. If you need any further information or assistance with an IP dispute, contact the IMPACT team.