Book review: IPEC Practice and Procedures

This is a review of the third edition of The Intellectual Property Enterprise Court: Practice and Procedure by Angela Fox, partner at Maucher Jenkins and head of the UK Litigation and Dispute Resolution group. 

 

The previous edition of the book was published back in 2016, so there was much to update. Not least, as the foreward by HHJ Richard Hacon points out, the impact of the pandemic lockdowns meant that the Intellectual Property Enterprise Court (IPEC) hearings took place online. Remote hearings now continue to contribute to the IPECs efficiency and reduce unnecessary travel. In fact, Fox provides updates across all the chapters of the book, covering recent judgements and procedural changes. 

Other significant changes addressed in the new edition are: the impact of Brexit on litigation in the IPEC, the amendments to the law on unjustified threats, rules on disclosure, the amendments to the Practice Direction on Pre-Action Conduct, statements of truth, default judgements,  and Part 36 indemnity costs in the IPEC’s capped costs regime.

The book contains 10 chapters and a thorough appendix of 17 items, including relevant rules, guidance, and samples. The first chapter of the book provides a history and composition of the court, including staffing, location, administration, and representation before the IPEC. As Fox points out- “one of the advantages of litigating in the IPEC is that a broader range of legal representatives can conduct proceedings and appear before it than in comparable cases brought elsewhere in the High Court.”

From there the text walks the reader through the entire workings of the IPEC. The second chapter begins with jurisdiction, complete with a nifty table to help you easily assess whether the IPEC has jurisdiction over common causes of action, moving on  to pre-action in the third chapter. This includes considering  whether the IPEC is the right forum for the case, taking into account relevant factors such as the resources of the parties, the complexity of the case, the value of the claim and the length of the trial. Then, assuming the decision is to take the case to the IPEC, the remainder of chapter three covers, in detail, information exchange, including letters before claim, disclosure and costs.

Chapter four considers the commencement of  proceedings, in particular highlighting the differences in procedure of the IPEC compared to elsewhere in the High Court, such as the form and content of statements of case, statements of truth, and terms for filing and service of documents. Moreover, the book guides the practitioner not just in the procedure but also in their practice, for example considering how the courts emphasis on case management and costs-benefit analysis impacts the approach to pleadings.

Chapter five offers invaluable guidance on case management in the IPEC. As Fox illustrates—

Case management in the IPEC is designed to flush out issues and arguments at an early stage, which can enhance the prospect of settling a claim. Where cases do not settle, however, failure to apply for necessary case management orders with appropriate parameters, at the right time, can have serious consequences on the outcome of a case in the IPEC. Consequently, a detailed understanding of how the court manages cases is essential for litigants there.

Applications are covered in chapter six. Fox highlights that the IPEC approaches application with a strong emphasis on proportionality and minimising costs, and as such, its application procedures differ in important ways from elsewhere in the High Court. 

Chapter seven examines more detailed principles and practice relating to specific disclosure, including product or process descriptions, factual evidence, expert evidence and experiments in the IPEC.

Chapter eight outlines all the steps involved in taking an action to trial in the IPEC, including the conduct of trials, the rules on routes of appeal and enforcement of judgments. Again, Fox’s knowledge and understanding of the inner workings of the IPEC help to inform and guide the practitioner:

 “The court has evolved a pragmatic and more informal approach to resolving issues in the lead-up to trial and at trial itself.” 

Leaving no stone left unturned, chapter nine provides a detailed explanation of costs recovery in the IPEC, including the applicable rules in all possible scenarios. This substantive chapter covers everything from cost caps to exceptions to the rules of costs, cases where the winner is not clear, costs in pro bono cases, VAT, interest, and costs of enforcement proceedings. 

The final chapter focuses on the small claims track of the IPEC, which uniquely offers a track for intellectual property disputes valued at less than £10,000, provided that certain criteria are met. Claims relating to patents or registered designs are excluded, but as Fox points out, this track can be useful for simple copyright claims or other low-value claims. The procedure for the small claims track differs substantially from that of the multi-track, all of which is clearly set out by Fox in chapter 10.  

This comprehensive, step-by-step guide continues to be a vital source for those using the IPEC. It should be in the hands of all those engaging with IPEC procedure and the workings of the court. It is conveniently accessible, as it is available not only in print but also as an eBook and on Westlaw UK.

ISBN:  9780414080935

Published by:  Sweet & Maxwell

Format:  Hardback, eBook and available via Westlaw UK.