Chief Master Marsh calms fears of IPEC overburdening with new transfer and triage process

The AmeriKat lost in thought
about how to value an IP claim
(c) Joe Delaney

Last week, the Kat published a guest post from James Sweeting (Lewis Silken) on the transfer and triage processes introduced by the new Chancery Guide (see post here).  The concern was that with the new "triage" process, whereby the Court will decide whether an action started in the High Court should remain or be transferred to the IPEC, there may be a tendency to transfer any claim less than £500,000 to IPEC.  James stated:

"However, the Masters in the Chancery Division are, at the moment, conducting the triage process a) as soon as the particulars of claim are lodged (in accordance with the Chancellor’s statement here) and b) with reference only to the ascribed value of the claim. It seems like their fairly hard and fast approach is this: anything less than £500,000, regardless of any other aspect of the transfer guidelines (eg “whether the facts, legal issues, remedies or procedures involved are simple or complex”), the IPEC Court Guide, the scale of disclosure, the number of witnesses etc is automatically transferred to IPEC."

Earlier this week, the Kat received an email from Chief Master Marsh in the Chancery Division who stated that all was not to be feared.  He explained as follows:

"I hope the following comments will allay the fears expressed by your contributor about a flood of transfers to the IPEC resulting from the early triage system in the Chancery Division:

1. The transfer guidelines in the Chancery Guide at para 14.19 make it clear that an order for transfer out will only be made if the value of the claim is ascertainable.

2. Since the early triage procedure was instituted in January 2016 only seven orders for transfer to the IPEC have been made at the early triage stage.

3. Every order for transfer contains the usual rubric permitting a party to apply to set aside the order."

Does this solve the fears outlined by James? James responded as follows:

"The whole point is that the value of IP claims are almost always unascertainable until there has been Island v Tring disclosure and that never takes place until after the issue of liability has been determined."

Which begs the perennial question - how do you value an IP claim when it comes to the Claim Form?  Is the amount always unascertainable?  And, if not, can the figure on the form always be believed?  The UPC Preparatory Committee's guidelines on calculating value-based fees suggests a way forward  for patent claims (see here), but what about other forms of IP?