(1) Describe the provisions governing the length and cost of proceedings. Under the laws of the United Kingdom there are no provisions which govern the length or costs of proceedings for provisional measures. Provided that a request for provisional measures is made promptly, the court will then stipulate a timetable for further procedure and a hearing will be appointed. Because provisional relief is necessarily requested because of the threat of imminent damage to the interests of the plaintiff, the court will expedite the timetable in an appropriate way according to the perceived need for immediate relief. In a very urgent case - for example, as regards a threatened breach of copyright in a newspaper about to be published - the court will hear the representatives of a plaintiff at very short notice, even in the middle of the night at the home of the “duty judge”. The appeal courts will likewise act with great expedition when it is perceived that this is necessary in the public interest. As indicated in Answer 8 above, the costs of proceedings are governed only by the sums of money which a party to litigation is able and chooses to spend on the case. A successful party can expect to recover a large proportion, though not all, of its attorney costs and disbursements (see Answer 5(2) above, the normal rules applying also to applications for provisional measures). However, the usual order for costs awarded in respect of applications for provisional relief is that these only take effect at the end of the litigation, that is after the full substantive trial, though the court can make an order for “costs to be taxed and paid forthwith”. (2) Provide any available data on the actual duration of proceedings and their cost. There is no such data available. This is not surprising bearing in mind the wide range of IPR enforcement proceedings which come before the court, as discussed in Answer 8(2) above.
[Answer 8: (1) Describe provisions governing the length and cost of proceedings. There are no such provisions in the laws of the United Kingdom. The length of proceedings for enforcement of IPRs is under the control of the court before which those proceedings are brought. The court in general does not keep to a pre set timetable. Rather the rules of court stipulate periods for dealing with various pre trial matters, which periods can usually be extended by agreement between the parties, without application to the court. However, at any stage, a party may apply to the court for a specific order that the litigation against the defaulting party be dismissed or an order requiring the opposing party to take some step within a defined period, failing which the litigation should automatically be determined against it. Before the substantive trial takes place, there will be many and varied pre trial procedures which the parties may be required or choose to employ. In England and Wales (and also in Northern Ireland), there is first a formal exchange of pleadings which sets out the allegations made against a party and the defences which the opposing party proposes to raise against these. These pleadings do not set out to enumerate the detailed facts which will have to be established if the allegations are to succeed at the eventual trial. A party may at this time make admissions which reduces the issues in contention and there then follows the discovery of documents which relate to the determination of those live issues, for which see Answer 3 above. When these pre trial procedures are judged to be complete, the case may be “set down” for trial. Usually in IPR enforcement litigation, the parties request a fixed date for that trial and when this takes place will depend on the estimated length of trial and the slots available in the court diary. Before the trial, it is now customary for the parties to be required to exchange written statements of the evidence to be presented at the trial by at least any expert witnesses to be called, and probably also of witnesses of fact and also for the advocates to submit a written summary of their intended submissions. These procedures (applicable in England, Wales and Northern Ireland) have been designed to reduce the length of the eventual substantive trial which is largely an oral procedure with examination, and cross examination of witnesses who testify to the court on the basis of their personal experiences. Their effectiveness depends greatly upon the attitude adopted by both parties. This will depend upon the costs and time which a party may feel is necessary to expend if its case is to be put before the court to the extent thought desirable for success—of course assuming that a party can afford to do so. Suffice it to say, that measures are available for a speedy and relatively inexpensive resolution of proceedings, but litigating parties often feel that their position will be prejudiced if they take advantage of them. This is because the taking of steps to curtail expense and limit the time taken will usually be seen as carrying an unacceptable risk of weakening the party's case to an extent which ought not to be taken having regard to the sums of money at stake, and the likelihood of an injunction being granted (or of not being granted as the case may be), which might be avoided by a fuller presentation of a party's case. In Scotland, the object of the system of written pleadings is to give notice to the court and to opponents of the facts and propositions of law on which the party relies in support of his claim or defence. The pleadings define the issues and are the basis upon which procedural questions such as the ambit of any commission or diligence for the recovery of evidence are determined. The pleadings do not specify the evidence upon which a party proposes to rely to establish the facts averred and in general parties are not required to exchange written statements of the evidence to be presented by expert or other witnesses. However, since the court may refuse to award expenses in relation to a witness whose evidence is not in issue parties are encouraged to consider and agree what can agreed. Such matters are then incorporated in a joint minute of admissions in which parties accept for the purpose of the proceedings the facts set out in the minute as true. In proceedings under the Patents Act 1949 and 1977 the court may at a pre proof hearing order a meeting of experts for the purpose of producing a joint report on the general state of the art or order each party to make available to every other party a copy of any precognitions, or reports, of skilled witnesses on any matter which is not the subject of a joint report. In all types of cases, the emphasis is on allowing a defendant sufficient time properly to prepare and present the defence he wishes to put forward, unless the court sees a particular argument as so unlikely to be accepted by the court that it orders at a pre trial stage that such plea should be removed from the formal defence pleading. Nevertheless, having said this, the courts are fully aware of the need to make justice as cheap as possible and the rules of court for England and Wales have recently been revised, with further revisions in prospect, aimed at simplifying the trial procedures in this jurisdiction but consistent with the overriding interests of natural justice. It can be expected that these will be followed, at least in Northern Ireland. (2) Provide any available data on the actual duration of proceedings and their cost. Such data is not available and, even if it were, would be meaningless. This is because proceedings for enforcement of IPRs can have a very wide spectrum of complexity. A defendant may seek to challenge each and every fact alleged against him, or it may make admissions limiting the matters to be decided to a very few points which may be matters of law to be decided upon a statement of underlying facts agreed between the parties. The rhetorical question: “How long is a piece of string?” is particularly apposite here. A simple case may occupy a court for perhaps only half a day, whereas the substantive trial of an action for patent infringement has been known to occupy the English court for six months. On the one hand, there may be a simple and blatant case of trademark infringement to which there can be no defence. Such an action may be decided very quickly upon an application for summary judgment because no arguable defence is seen. If the court agrees, judgment can be given within a matter of weeks from the issue of the writ. However, in such a case, the probability is that the defendant will have voluntarily submitted to judgment in order to avoid the costs of a trial. In such a submission, the defendant can consent to an injunction being given against him, and the court will normally make any order which the parties, by consent, ask to be made, provided only that such an order would not go beyond the powers of the court. However, instead of a formal injunction, the defendant can give a voluntary undertaking to the court to cease and desist from the alleged infringing activity. Such an undertaking—because it is given to the court— has the same effect as an injunction, though perhaps not so damaging to the public image of the defendant. This, however, does not reflect Scottish practise. On the other hand, the enforcement of an IPR may involve very complicated issues of both fact and law, both on whether the IPR has been infringed and whether the IPR was validly granted. Such a dispute can occupy the court for several weeks of actual trial, one such case in 1979 lasting six months, with several years taken over the pre trial preparation. Such cases are rare, but they do exist. Any estimate of costs can only be anecdotal. However, it is unlikely that a contested case in the High Court could be taken to a conclusion for under £50,000 (mainly in attorney costs and expenses), except in a very simple case. Where the trial lasts more than three weeks, the costs of the proceedings can be expected to exceed £1,000,000 for each party, and considerably more if experiments are conducted by the parties for the purpose of providing evidence to be assessed by the court, or the case lasts longer than 15 days of trial in court. The costs of litigation in England and Wales (and also in Northern Ireland) are undoubtedly increased by the need to employ a team consisting of a barrister (advocate) to present the case orally before the court and a solicitor (to prepare the pleadings and be generally responsible for the preparation of the case). In an important IPR enforcement case (which is usually the position), it will be customary to engage both a senior barrister who is a Queen's Counsel, to present the case in court, assisted by a junior counsel. Also, it will be usual in patent litigation at least for the legal team to be augmented by a patent agent/attorney to assist in the preparation of the case for trial as regards its technological aspects. Nevertheless, the Patents County Court, instituted in 1990 as an alternative forum for resolution of patent and design litigation, does provide a means whereby a case can be conducted (including appearance in court) by a single person who can be a patent agent/attorney, a solicitor or a barrister. Thus, if financial means are limited, a case can be conducted in this forum at reduced cost, though only at the expense of reducing the legal effectiveness of the party's representation which may perhaps be by a relatively inexperienced person whose fees will be less. In short, the duration and costs of a case are governed only by the time and money which a party judges that it is necessary or desirable to expend in order to be successful in the litigation, and the ability to fund that expenditure. The complexity of the case is the other major factor. In recent years insurance schemes have become available under which a rightholder can insure against the costs of litigation to enforce his IPR; and also for potential defendants to take out insurance to fund a defence of litigation brought against them. It must also be added that a natural person without financial resources, or having only very limited financial resources, can be granted “legal aid” whereby litigation for enforcement of IPRs can be funded out of central funds. Such “legal aid” dependant on financial resources is calculated at the commencement of proceedings. Where a legally aided litigant is successful property recovered or preserved will go first to meet his outstanding liability to the legal aid funded.]
[Answer 5.2: (2) damages, including recovery of profits, and expenses, including attorney's fees; Once a court has found infringement of an IPR, the plaintiff is entitled automatically to an award of damages, unless the infringer (other than in instances of infringement of a registered trademark) can show that he was not aware of the existence of the IPR and had no reason to believe that such might exist. Normally, the court then orders the holding of a separate enquiry to assess the amount of those damages. Damages as such (though see sub answer (4) below) are assessed to compensate the rightholder for the loss which it has suffered as a result of the infringing acts which have been established. Such loss is not (by a recent decision of the English Patents Court) limited to the loss suffered directly by the rightholder but extends to any loss which can said to have been caused by, or which resulted from, the infringing act committed by the defendants. Thus, loss of sales of associated equipment, and from contracts for repairs and maintenance, have a sufficient causal connection to the infringing act as to be considered to flow directly from that infringement. The rightholder may thus be compensated for such associated losses. However, the rightholder will only be able to obtain compensation in the form of the profits lost by him if it can demonstrate to the court that,“but for” the infringing act, it would have made those profits. Where this cannot (as is the usual case) be shown, the court will assess the direct damage suffered by the rightholder by the infringing acts on the basis of a reasonable royalty; and this will be so where the rightholder has granted licences to third parties on terms which can be seen to indicate the level of such a royalty. In the case of infringement of copyright (or related right), or of an unregistered design right, the court can also award “additional damages” in cases of perceived flagrant infringement or where undue benefit has accrued to the infringer. As to expenses, and attorney's fees, it is a rule within the legal systems of England, Wales and Northern Ireland that the court makes an order in favour of the successful party that the losing party pays its costs (expenses in Scotland) “to be taxed if not otherwise agreed”. Under such an order the successful party will normally recover a sum corresponding to the reasonable sums which were reasonably expended in the litigation (including court costs and attorney's fees). If these cannot be agreed between the parties, such costs are assessed by a Court Taxing Master. However, as a party will normally spend more money on a case than a taxing master will consider reasonable, and as such Master will disallow all claimed costs for which there are not sufficient evidence of how the costs have been incurred and of receipts for expenditure, a successful party will, in actuality, probably recover only about 60% of its actual costs. Where the court considers that litigation (or a single issue in it) was brought unreasonably, it can make an order for the costs thereof to be assessed on an “indemnity basis”. Under this basis the party's costs are assessed as its total costs other than those which were unreasonably incurred. An order for indemnity costs is mandatory if a defendant unsuccessfully challenges the validity of a patent which has previously been upheld in revocation proceedings and a“certificate of validity” has been issued. In Scotland the award of expenses is a matter for the discretion of the courts. The principle upon which the Scottish courts proceed in awarding expenses is that the cost of litigation should fall on the party who has caused the litigation. The general rule for applying this principle is that expenses are awarded in favour of the successful party. Where the application of the general rule would not carry out the principle the court will take account of conduct on the part of the successful party which may have unnecessarily or unreasonably caused or protracted the litigation. An account of expenses is prepared and, in the absence of agreement, taxed by the auditor of court as between party and party or as between solicitor and client. An award of expenses without qualification implies expenses taxed as between party and party. An account will not be taxed on the higher basis, i.e. as between solicitor and client unless expressly awarded by the court. Where the validity of a patent is unsuccessfully challenged that position is reversed by a legislative provision [Section 65 of the Patents Act 1977], i.e. it is provided that a party shall be entitled to expenses as between solicitor and client unless the court otherwise directs.]
[Answer 8.2: (2) Provide any available data on the actual duration of proceedings and their cost. Such data is not available and, even if it were, would be meaningless. This is because proceedings for enforcement of IPRs can have a very wide spectrum of complexity. A defendant may seek to challenge each and every fact alleged against him, or it may make admissions limiting the matters to be decided to a very few points which may be matters of law to be decided upon a statement of underlying facts agreed between the parties. The rhetorical question: “How long is a piece of string?” is particularly apposite here. A simple case may occupy a court for perhaps only half a day, whereas the substantive trial of an action for patent infringement has been known to occupy the English court for six months. On the one hand, there may be a simple and blatant case of trademark infringement to which there can be no defence. Such an action may be decided very quickly upon an application for summary judgment because no arguable defence is seen. If the court agrees, judgment can be given within a matter of weeks from the issue of the writ. However, in such a case, the probability is that the defendant will have voluntarily submitted to judgment in order to avoid the costs of a trial. In such a submission, the defendant can consent to an injunction being given against him, and the court will normally make any order which the parties, by consent, ask to be made, provided only that such an order would not go beyond the powers of the court. However, instead of a formal injunction, the defendant can give a voluntary undertaking to the court to cease and desist from the alleged infringing activity. Such an undertaking—because it is given to the court— has the same effect as an injunction, though perhaps not so damaging to the public image of the defendant. This, however, does not reflect Scottish practise. On the other hand, the enforcement of an IPR may involve very complicated issues of both fact and law, both on whether the IPR has been infringed and whether the IPR was validly granted. Such a dispute can occupy the court for several weeks of actual trial, one such case in 1979 lasting six months, with several years taken over the pre trial preparation. Such cases are rare, but they do exist. Any estimate of costs can only be anecdotal. However, it is unlikely that a contested case in the High Court could be taken to a conclusion for under £50,000 (mainly in attorney costs and expenses), except in a very simple case. Where the trial lasts more than three weeks, the costs of the proceedings can be expected to exceed £1,000,000 for each party, and considerably more if experiments are conducted by the parties for the purpose of providing evidence to be assessed by the court, or the case lasts longer than 15 days of trial in court. The costs of litigation in England and Wales (and also in Northern Ireland) are undoubtedly increased by the need to employ a team consisting of a barrister (advocate) to present the case orally before the court and a solicitor (to prepare the pleadings and be generally responsible for the preparation of the case). In an important IPR enforcement case (which is usually the position), it will be customary to engage both a senior barrister who is a Queen's Counsel, to present the case in court, assisted by a junior counsel. Also, it will be usual in patent litigation at least for the legal team to be augmented by a patent agent/attorney to assist in the preparation of the case for trial as regards its technological aspects. Nevertheless, the Patents County Court, instituted in 1990 as an alternative forum for resolution of patent and design litigation, does provide a means whereby a case can be conducted (including appearance in court) by a single person who can be a patent agent/attorney, a solicitor or a barrister. Thus, if financial means are limited, a case can be conducted in this forum at reduced cost, though only at the expense of reducing the legal effectiveness of the party's representation which may perhaps be by a relatively inexperienced person whose fees will be less. In short, the duration and costs of a case are governed only by the time and money which a party judges that it is necessary or desirable to expend in order to be successful in the litigation, and the ability to fund that expenditure. The complexity of the case is the other major factor. In recent years insurance schemes have become available under which a rightholder can insure against the costs of litigation to enforce his IPR; and also for potential defendants to take out insurance to fund a defence of litigation brought against them. It must also be added that a natural person without financial resources, or having only very limited financial resources, can be granted “legal aid” whereby litigation for enforcement of IPRs can be funded out of central funds. Such “legal aid” dependant on financial resources is calculated at the commencement of proceedings. Where a legally aided litigant is successful property recovered or preserved will go first to meet his outstanding liability to the legal aid funded.]