SPECIALISED IP JURISDICTIONS IN THE UK AILSA CARTER, PROFESSIONAL - - PowerPoint PPT Presentation

AILSA CARTER, PROFESSIONAL SUPPORT LAWYER 28 APRIL 2016

SPECIALISED IP JURISDICTIONS IN THE UK

THE ‘COMMON LAW’ - ORIGINS

• Pre-1066 oral dispute resolution system in England
• 1166: local customs replaced by national laws made by the judges

in Westminster (London) that were ‘common’ to all

• English ‘common law’ system developed into many modern legal

systems

• England & Wales, Ireland, United States (except Louisiana),

Canada, Australia, New Zealand, South Africa, Singapore, India (most states), Hong Kong, Bangladesh, Pakistan, Israel

COMMON LAW - HALLMARKS

• Accusatorial system
• for the parties to investigate & present facts founds
• Pleas - ‘pleadings’
• notice function – Magna Carta (1215)
• issue formatting role has led to a refined structure
• Single lengthy oral trial hearing
• ral scrutiny of legal submissions and evidence
• disclosure to facilitate information gathering & pre-trial prep
• Judges
• appointed from senior advocates with extensive experience
• make case-law; case-law binds lower & later courts
• No intervening written constitution in many Common law countries

THE LEGAL SYSTEMS OF THE UK

SIPJ COURT STRUCTURE: ENGLAND & WALES

UK SUPREME COURT COURT OF APPEAL OF ENGLAND & WALES

COUNTY COURTS

HIGH COURT

CHANCERY DIVISION PATENTS COURT IPEC QBD

• ther

Lord Neuberger Floyd LJ Kitchin LJ Arnold J, Birss J, Carr J HHJ Hacon

UK: SPECIALISED IP ‘JURISDICTIONS’

• IPEC:
• smaller value, less complex IP claims
• Caps on monetary relief (£500,000) & recoverable costs (£50,000

+ £25,000)

• Judge Hacon
• Patents Court:
• patents, SPCs, registered designs, STRs, plant variety rights
• categorisation by technical difficulty
• category 5 judges - Arnold J, Birss J, Carr J
• Chancery division:
• registered TMs, other IP rights
• Judges appointed from ‘QCs’ - the most senior advocates in the field

SIPJ PROCEDURE

• Short, refined pleadings; parties may serve directly on each other
• Interim relief available at short notice
• Disclosure routinely available but managed & limited
• Written evidence in chief and written skeleton arguments
• Single substantive trial on liability
• at first instance heard by a single, experienced judge
• scope to appoint technical adviser – very rarely used
• judicial ‘teach-in’ occasionally used
• expert evidence almost always submitted in patent cases; experts

have a duty to court despite retention by one party

• expert (& fact) evidence scrutinised by cross-examination
• agreed primers frequently used
• Final injunctive relief usually follows liability; quantum a second stage

SOME DIFFERENCES

• Single first instance judge, no panel, no technical judge/technical

expert panel member

• Judge determines weight to attribute to expert (& fact) evidence,

according to how it withstands the scrutiny of cross-examination

• connection between expert / witness & party does not

automatically impact the weight attributed to the evidence

• expert witnesses usually have no legal background
• Legal representation -
• Barrister (specialist advocate) supported by solicitor, Solicitor

Advocate, Solicitor (IPEC only), Patent / Trade mark attorney with additional litigation/advocacy certificate

• Role of patent/trade mark attorney is as a legal representative,

not as a technical expert or expert witness

CONTACT

Gowling WLG (UK) LLP is a member of Gowling WLG, an international law firm which consists of independent and autonomous entities providing services around the world. Our structure is explained in more detail at www.gowlingwlg.com/legal

www.gowlingwlg.com

AILSA CARTER

Professional Support Lawyer Senior Associate Intellectual Property GowlingWLGUKIP Ailsa.carter@gowlingwlg.com +44 (0)20 3636 8092