What to do when your intellectual property is infringed

If you discover infringement of your IP (whether online or otherwise), there is a wide range of options available to stop it.

The quickest way of stopping any infringement is often to write to the person or company either directly or via a lawyer to put them on notice of your rights and ask them to stop. It is often possible to reach an agreement and stop the infringement or reach a licence agreement without wasting too much time or money. 

Writing is a prerequisite to legal action in the UK in any event, unless there is a reason for taking action without letting the other person know first, such as urgency or good grounds for concern about destruction of evidence.

If the infringement is online, it is possible to notify one or more of the online intermediaries of your rights. These intermediaries include Apple, eBay and Amazon (who can remove digital and physical products from their websites), Google (who will remove pages from search rankings in certain circumstances), PayPal (who can suspend the infringer’s ability to take payments) and the Internet Service Provider. It is possible to notify these companies directly or via a lawyer.

These approaches work particularly well for trade marks and copyright but can be less successful for patents and designs which tend to be more complex and more subject to challenges to both their validity and the infringement. If correspondence and/or use of online intermediaries is unsuccessful or irrelevant, there is no need to panic. 

A UK court has developed a simple, streamlined and cost-effective solution for small-to-medium sized businesses whose IP has been infringed or subjected to legal challenge. This court is known as the Patents County Court (soon to be renamed the IP Enterprise Court or IPEC).

The key features of this court are:

Pro rightsholders

We undertook some analysis of 18 months worth of cases and found that 73.5 per cent of cases brought were successful in enforcing IP rights.

Pro design

Designs (which can be both registered and unregistered) are often misunderstood by businesses. The IPEC has a 100 per cent record on finding infringement of at least one design in all of the design cases brought in the last 18 months. Often businesses focus on patents, trade marks and copyright but don’t realise that they may have design rights as well in the shape of a product or a particular pattern. If you think that a very similar looking product to your product has been produced by a competitor it is worth getting legal advice on the design rights because, provided you meet the various complex requirements, a claim has a good chance of being successful.

Procedure

The judges only allow key issues to be considered and restrict expensive procedures like disclosure of documents and witness evidence to those deemed most relevant. The longest a case will last is two days.

Pragmatic

The court is willing to have telephone hearings to save costs, take written submissions (by email!) for simple issues and use its powers to take action against people who regularly ignore court orders or fail to turn up to hearings. When both parties agree (particularly for trade marks) it will issue preliminary non-binding opinions which give an indication of how the court is likely to rule. So far these opinions have always enabled settlement before trial.

Costs

£50,000 is the maximum liability that a party will ever have for the other party’s costs. The losing party has to bear its own costs, and the winner frequently incurs higher legal costs than can be recovered, but they have the benefit of knowing the risk of losing from the outset. Legal costs typically range between £100,000 to £200,000 for a patent or design case which goes to trial and significantly less for copyright and many trade mark cases.

Compared to the High Court

The IPEC is a less rigorous venue than the High Court but for many SMEs it is more than adequate for their needs. The big differences are cost, time and case management. Because of very active case management in the IPEC:

  • Costs are, on average, 85 per cent less than the High Court e.g. a full trade mark case costs around £650,000 to £1m in the High Court but in the IPEC the average costs spent by each party were £100,000 to £150,000.
  • The typical time for a case to be heard is eight to 12 months in the IPEC compared to as much as 18 months for the High Court.
  • The majority of patent cases concerned mechanical patents (e.g. an automatic shower cleaner) rather than the complex telecoms and pharmaceutical cases which fill up the High Court timetable.
In order to be able to enforce IP rights, you need to have them in the first place. You cannot get a patent if you have told people about the idea (without a non-disclosure agreement) and you have a year from first marketing a product to register a design.

Before launching (or making a public statement) about a new product or brand name it is always worth considering whether there is a trade mark, design or patent which could be registered, and if necessary taking legal advice to get the registration.

Rosie Burbidge is an intellectual property lawyer at specialist IP law firm Rouse.

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