SPECIALISED IP JURISDICTIONS IN THE UK AILSA CARTER, PROFESSIONAL SUPPORT LAWYER 28 APRIL 2016
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 • oral 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 Lord Neuberger UK SUPREME COURT COURT OF APPEAL OF ENGLAND & WALES Floyd LJ Kitchin LJ HIGH COURT COUNTY COURTS CHANCERY PATENTS QBD other DIVISION COURT IPEC 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 AILSA CARTER Professional Support Lawyer Senior Associate Intellectual Property +44 (0)20 3636 8092 Ailsa.carter@gowlingwlg.com GowlingWLGUKIP Gowling WLG (UK) LLP is a member of Gowling WLG, an international law firm which consists of independent www.gowlingwlg.com and autonomous entities providing services around the world. Our structure is explained in more detail at www.gowlingwlg.com/legal
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