Matt's deck Flashcards
What is the maximum claim value of the IPEC small claims track?
£10k
What is the value range for claims brought before IPEC multi-track?
£10k - £500k
What is the minimum value of a claim brought before the Patents or Chancery Courts?
£100k
What rights can IPEC small claims NOT hear?
Patents
RDRs
PVRs
Semiconductor topography
What costs are available in IPEC small claims?
None
What costs are available in IPEC multi-track?
Capped costs up to a maximum of £60k
What is the costs regime before the Chancery / Patents Court?
Principle of loser pays the winner’s costs - no cap
Outline the four steps for a cause of action.
Duty, Breach, Causation, Loss; or
Right, Infringement, Causation, Loss
What is the test for causation?
The ‘but for’ test
What are some advantages of ADR?
Cheaper
Quicker
Confidential
Commercially creative solutions Maintains relationships
Avoids litigation risk
What are some advantages to pursuing through to trial?
Highest quantum available
Enforceable outcome
Publicity
Precedent
What kinds of ADR are available?
Mediation
Negotiation
Arbitration
Walking away
Stop + pay
What other tools are available to supplement ADR/court proceedings?
UKIPO opinion
Early neutral evaluation
Expert determination
Media pressure
Rule 14.1 a) A regulated person must not submit: statements of fact or contentions that are not…
… supported by the evidence OR instructed by the client
(NB the ‘or’ means ‘and’)
Rule 14.1 b) A regulated person must not submit: contentions that he cannot…
… justify as prima facie arguable
Rule 14.1 c) A regulated person must not submit: allegations of…
… fraud - unless instructed to + prima facie arguable
What is the first stage of the two-stage approach to conduct issues?
Decline to do as instructed (and explain why to client)
What is the second stage of the two-stage approach to conduct issues?
Cease to act for the client
Which court limits disclosure?
IPEC - ‘specific disclosure’
(NB not the same as a request for specific disclosure)
What are the three forms of service of a document, in preferential order?
Personal service
Last known address
First class post
Which court and track does not offer interim injunctions as a remedy?
IPEC small claims
What rights can IPEC multi track NOT hear?
None - IPEC multi track can hear claims relating to any type of IP right
What rights does the Patents Court handle?
Patents
RDRs
PVRs
Semiconductor topography
What rights does the Chancery Court handle?
TMs
URDRs
Passing off
Copyright
What is the time bar period on bringing claims before IPEC?
Six years - claim must be issued six years from cause of action
What are the pre-action stages of litigation?
Letter of claim
Letter of response
What stages make up the Statement of Case of litigation?
Claim form + particulars
Defence (+ counterclaim)
Reply (+ defence to counterclaim
What form must be completed prior to the case management conference?
Precedent H (costs)
What stages make up the Evidence stage of litigation?
Disclosure
Inspection
Witnesses of fact
Expert report
What stages make up the Trial section of litigation?
Pre-trial review
Trial preparation
Skeleton arguments
Trial
Judgment
Costs
Appeal
What occurs after the Statement of Facts stage but before the Evidence stage of litigation?
Case Management Conference
What comes out of the Case Management Conference?
Case summary
Case Management Order (CMO)
Directions questionnaire (not IPEC_
Standard disclosure requires the parties to disclose…
(a) the documents on which he relies; and
(b) the documents which –
(i) adversely affect his own case;
(ii) adversely affect another party’s case; or
(iii) support another party’s case; and
(c) the documents which he is required to disclose by a relevant practice direction.
What is the three-part test for Legal Advice Privilege?
Is it confidential?
Is it created between lawyer and client?
Is it created for the dominant purpose of legal advice?
What term encompasses Legal Advice Privilege and Litigation Advice Privilege?
Legal Professional Privilege
How is ‘client’ defined in the Legal Advice Privilege test?
Narrowly - only senior members of the client company capable of giving instructions
How is ‘legal advice’ defined in the Legal Advice Privilege test?
Broadly - anything in which the lawyer is using the legal context to advise
What is the three-part test for Litigation Advice Privilege?
Is it confidential?
Is it created with litigation in reasonable prospect?
Is it created for the dominant purpose of litigation?
Response letters should include
Reasons why the claim or part of it is not accepted
Counterclaim (optional)
Any facts as to why the Claimant is wholly or partly to blame;
Whether the Defendant agrees to the proposal for ADR, or suggests an alternative method;
A list of essential documents and any the Defendant wishes to see; and Copies of documents the Claimant has requested and / or any reasons why requested documents are not provided.
How must a Part 36 offer be made?
In writing;
Must state it is intended to be a Part 36 offer;
Must make clear whether it relates to whole claim or only part of it;
Must be open for at least 21 days.
What is the privilege status of a Part 36 offer?
Without prejudice, save as to costs
Consequences of claimant’s failure to beat a defendant’s Part 36 offer at trial in the high court?
Defendant is entitled to:
costs from the date on which the period for acceptance of the offer expired; and
interest on those costs.
Consequences of claimant beating its own Part 36 offer at trial in the high court?
Claimant is entitled to:
interest on damages;
costs from date of expiry of offer;
interest on costs;
additional damages up to £75k
Consequences of claimant’s failure to beat a defendant’s Part 36 offer at trial in IPEC?
Nothing - cost cap remains
Consequences of claimant beating its own Part 36 offer at trial in IPEC?
Cap may be raised 25% from £60k to £75k
How may a confidential document be handled in disclosure?
A confidentiality order may be issued
What documents are eligible for disclosure?
Those within a party’s control and that can be found with a reasonable search
What are the penalties for non-compliance with pre-action procedure?
Adverse case management orders;
Costs sanctions; and
Deprivation or lower interest on costs won.
What is the deadline to serve a Defence in IPEC and Patents courts?
42 days from deemed service of claim
What is the deadline to serve a Defence in Chancery court?
28 days from deemed service of claim
When might the IPEC multi-track costs cap not apply?
Where the court considers that a party has behaved in a manner which amounts to an abuse of the court’s process
