Friday, 13 April 2018

Enforcing Cornish Intellectual Property Rights

Greenburrow Pumping Engine of Trevithick's Mine
Author Rod Allday
Licence Creative Commons Attribution-Share Alike 2.0
Source Wikipedia

Jane Lambert

In 1797 the famous Cornish mining engineer, Richard Trevithick, was sued for patent infringement by the engineering firm Boulton & Watt. I have tried to find a report or other account of the case.  All I have been able to discover is that an injunction was granted and notice of the order was posted on one of Trevithick's buildings but it does not seem to have been served on Trevithick himself allegedly because the process servers feared they might be thrown down a mine shaft were they to approach him.

Had Trevithinck been sued today the claim would have proceeded in the Patents Court or Intellectual Property Enterprise Court ("IPEC") because CPR 63.2 (2) allocates to those courts actions relating to patents, registered or registered Community designs, semiconductor topographies or plant varieties.  Until 1 Oct 2017 those actions would have been issued out of the Rolls Building in London because that is where those courts are based.  However, paragraph 2.3 (2) of the Practice Direction - Business and Property Courts requires them to be issued out of the Bristol District Registry if they have significant links with Cornwall or some other part of the Western Circuit.   That is because the Bristol District Registry is the only Business and Property Court ("B&PC") district registry on the Wester Circuit.

Paragraph 2.3 (3) of the Practice Direction states that a link to a particular circuit is established where:
"(a) one or more of the parties has its address or registered office in the circuit in question (with extra weight given to the address of any non-represented parties);
(b) at least one of the witnesses expected to give oral evidence at trial or other hearing is located in the circuit;
(c) the dispute occurred in a location within the circuit;
(d) the dispute concerns land, goods or other assets located in the circuit; or
(e) the parties’ legal representatives are based in the circuit."
Paragraph 2.3 (4) adds that  a claim which raises significant questions of fact or law in common with another claim already proceeding before a B&PC District Registry may be regarded as having significant links with that  circuit.

All other IP cases with such links to the Western Circuit should be issued out of Bristol if they have significant links with Cornwall or elsewhere on the Western Circuit whether in the High Court, County Court or IPEC. That is because the Bristol District Registry is also the only Chancery district registry on the Western Circuit.  Accordingly, Bristol is the only County Court hearing centre on the Western Circuit with a Chancery district registry attached.

If the case has significant links with another circuit as may have been the case in the claim brought against Trevithick as Boulton and Watt were based in Birmingham, the claim should be brought in another B&PC District Registry.  Alternatively, it can be issued out of the Rolls Building in London.

Paragraph 2.5 (3) of PD-Business and Property Courts warns that:
"A claim in the Intellectual Property List, which includes the Patents Court and the Intellectual Property Enterprise Court (“IPEC”) (and includes the IPEC small claims track to which rule 63.27 applies), may be issued in an appropriate BPCs District Registry. However the case management and/or trial of a claim in the Patents Court or the IPEC in the BPCs District Registry in question will be dependent on an appropriate judge being made available in the district registry in question."
However, both the Patents Court and IPEC guides have stated for many years that assigned and enterprise judges will sit outside London for the purpose of saving time or costs (see paragraph 4 of the Patents Court Guide and paragraph 1.5 of The Intellectual Property Enterprise Court Guide).

Anyone wishing to discuss this article should call me on 020 7404 5252 during office hours or send me a message through my contact form.

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