Over the past few weeks, we have held up a mirror to how IPEC disputes are being run by English law firms and the bar.  We have called out ways in which fee generation is taking priority over using IPEC in the way in which it was intended.  We have encouraged brand owners to take more control of their IPEC disputes; and have pushed both solicitors and barristers to keep fees down in IPEC.

Our campaign has sparked debate online and in the press.  Law firms and IPEC users alike have contacted us with their own experiences of the behaviours we have highlighted. Judge Hacon has also remarked to us (in response to our open letter to him) that he considers that the views of those who use IPEC are all too often filtered before they reach him.

Following CMS’s recent report into IPEC and our letter, Judge Hacon has invited further feedback on IPEC to be sent directly to him, which the IPEC judges will then review and discuss.  We encourage brand owners and the legal profession alike to write to Judge Hacon with their views and suggestions. 

A number of themes have emerged during our campaign, as follows:

1. It is clear from the CMS report and Managing IP’s interviews with the legal profession that smaller brand owners are being pushed out of IPEC because of the costs.  There has been suggestion from the bar and the big City firms that the answer is to raise the IPEC costs cap.  This is lazy thinking and avoids the real issue.  The answer isn’t to increase the costs cap, it is to reduce the fees incurred and charged by the solicitors and the bar.
   
   
   
2. One firm recounted to us that there might be a perceived unfairness where a case is complex and is “wrongly” transferred to IPEC from the High Court – in those circumstances, it was put to us, it would be wrong for the party to be prevented from running its fullest case in IPEC. We do not agree. If a case is transferred to IPEC (rightly or wrongly), the parties need to adjust their course accordingly, and be more nimble in the points they run and the evidence they lead.  
   
   
   
3. It has also been suggested by members of the bar that paper hearings are not necessarily cheaper than oral hearings as “you then have to write down something you could otherwise explain in person, and the written arguments may run to twice the length that they need to”.  Again, we take a contrary view: barristers and their instructing solicitors need to trim down IPEC cases from the outset and the reduction in fees, paper, and court time will follow.  IPEC is no place for extensive pleadings or extensive written submissions.  In truth, counsel usually spend a lot of time (and money) on detailed pleadings only for them to effectively re-write the case in their skeletons and opening submissions, with very little focus on the pleadings at trial.
   
   
   
4. It has also been suggested by some barristers that the answer does not lie in page limits for pleadings, because (it is said) that will result in longer trials due to the need for longer oral submissions. Again, we do not accept that. IPEC has the advantage of specialist IP judges – they do not need lengthy submissions and will understand the issues perfectly well from a succinct pleading.  

IPEC should be a great example of the ability to bring a claim to trial in an efficient and cost-effective way – handing brand owners of all size a (relatively) easy forum to protect their most valuable assets. As is clear from the quotes we included in our article on the judiciary, David Stone (a current IPEC judge) is proof of a modern judge gripping what IPEC is there for and sending a clear message to lawyers when they overstep the bounds.  This approach is of paramount importance if IPEC is to be made fit for purpose.

City firms should embrace IPEC as a forum where the next generation of IP lawyers can cut their teeth.  It should be partner and QC – lite, with associates and junior counsel running IPEC claims, giving them the reins and the experience of litigation at the helm while also keeping costs down.  This would reflect the way that barristers often approach UKIPO cases, with junior barristers getting far more responsibility in the UKIPO and no leading counsel.  IPEC is not the place for senior partners with charge-out rates of £500+.

However, unless or until brand owners feel empowered to tell their lawyers to change their litigation strategy and fee practices in IPEC, things are unlikely to change. 

We hope that our campaign has brought cost generating behaviours in IPEC to the forefront of the minds of brand owners, law firms, barristers, and the judiciary alike.  We eagerly await a response from Judge Hacon and the other IPEC judges and will report back then. 

In the meantime, please do get in touch with us with your own views and thoughts on this topic.  Stobbs will be chairing a panel on this topic once the judiciary response is in and if you are interested in contributing or attending then please do let us know!