Inside the PCC: An interview with Colin Birss

The Patents County Court (PCC) was set up in the UK in 1990, but reformed in 2010 with new impetus behind it and a new procedure. Since then, it has begun the task of levelling the playing field for small and medium sized enterprises (SMEs) litigating their intellectual property.

With a two-day limit on trials and a cost order cap set at £50,000, the PCC offers smaller businesses a faster, more streamlined and less risky option for IP protection. We spoke to presiding judge Colin Birss about the court’s successes to date, and its future.

What was the rationale behind establishing the PCC?

The PCC was created by parliament to serve the interests of SMEs by providing an affordable forum for IP litigation. It was set up in 1990. In 2009 the IP Court Users’ Committee set up a working group to consider proposals for reform of the PCC. They reported that the PCC had not succeeded in its aim of providing an affordable forum. They set out proposals for reform.

The proposals were endorsed by the Review on Civil Litigation Costs by Lord Justice Jackson in December 2009. As a result the PCC was reformed, with effect from October 2010. The objective of the reforms was to set up a court which could improve access to justice for SMEs in IP cases. The idea was to streamline the procedure in order to reduce costs and also change the costs regime itself.

What has been the secret of the PCC’s success?

What makes the PCC distinctive is its overall costs cap coupled with a streamlined procedure, with active management of the case by the court. The judges are IP specialists. These factors all combine to allow smaller IP disputes to be resolved in a more cost-effective and efficient manner than was possible before.

Is the number of cases brought to the PCC increasing?

Yes: 102 cases were issued in the PCC in 2010, 157 in 2011 and 201 in 2012.

What has been the PCC’s most significant case so far?

The range of IP rights which have been litigated in the PCC since the reforms were put in place is remarkable.

There have been cases concerned with patents for items such as disposable washing bowls, shower sprays, medical injectors, racing car brake calipers and processes for plastic moulding; cases about copyright in photographs, a film script, video footage, cartoons, plaid fabric and other things; performers’ rights; community and UK trademarks including some household names and some less well known marks; passing off cases; community and UK registered and unregistered designs for ice bucket bags, shower units and window blinds; and database rights.

The parties before the PCC since October 2010 have included individuals, many SMEs and a few multinationals as well.

The only case I would pick out is Westwood v Knight [2011] EWPCC 8 for the simple reason that it was the first full trial held under the new procedure. It was on March 8, 2011, and was about trademarks, passing off and copyright infringement. The case was prepared in a streamlined fashion and heard in a single day, and it demonstrated that the new procedural system worked.

Other than a simpler, less costly option for smaller parties to protect their IP, what can the PCC offer that the High Court cannot?

I would not underestimate the importance of providing a simpler, less costly option for smaller parties to protect their IP.

“IT MEANS THAT CASES WHICH IN THE PAST WERE ECONOMICALLY UNREALISTIC TO FIGHT CAN NOW BE TAKEN TO TRIAL AT PROPORTIONATE COST.”

A very important aspect of the PCC system is that it is a court very much in the British common law tradition. The hallmarks of that legal tradition are things such as cross-examination of witnesses, oral argument, disclosure (discovery) of documents, and witnessing of experimental evidence.

There has been a perception in the past that this British approach to civil justice in the IP sphere was possible only at very high cost. The PCC system shows that this perception is not correct. It shows that it is possible to retain all these measures in a framework where the legal cost is much reduced. That greatly improves access to justice because it means that cases which in the past were economically unrealistic to fight can now be taken to trial at proportionate cost.

The key insight is to control all of these measures to an extent appropriate to the case in hand. That extent varies from case to case.

What foreseeable challenges does the PCC face?

The PCC is becoming popular. So far this has not presented any serious problems. There are specialist recorders who sit in the PCC as parttime deputy judges. The small claims track opened in October 2012. Some of the cases in the PCC before that date were cases which would now be handled on the small claims track. The challenge will come if the growth in cases which occurred in 2011 and 2012 continues.

Can you still accommodate all parties who bring their cases to the PCC?

Yes.

Are any rule changes due?

The plan is to reconstitute the PCC in the summer of 2013. The reconstitution will make no difference at all to the fundamental objective of the court to serve the interests of SMEs by providing an affordable forum for IP litigation. Formally the PCC today is part of Central London County Court but in practice the home of the PCC is in the Rolls Building, working closely alongside the Chancery Division of the High Court, including the Patents Court.

The reconstitution will change the formal status of the PCC so that it becomes a specialist list inside the Chancery Division. It will have a new name which reflects its general IP jurisdiction rather than referring only to patents. The reconstitution is a positive step to resolve a number of jurisdictional and other technical difficulties. The procedure will remain exactly the same.

Is the PCC model exportable to other jurisdictions, and can you see a version of it being rolled out EU-wide in future?

It is not for me to tell other people how to run their legal systems. Some of the difficulties which the PCC was designed to address are specific to the English system. Nevertheless it bears emphasising that the inspiration for the some of the procedural reforms which were proposed in 2009 came from the procedure adopted in other IP courts in Europe, particularly the courts in Germany, Holland, France and Switzerland.

There was also influence from the European Patent Office, and what were at that time the proposals for the new Unified Patent Court (UPC). In some ways the PCC procedure is a hybrid, mixing a British approach together with the approaches to IP litigation elsewhere in Europe. Some of the elements of the PCC procedure are similar to the ways in which the new UPC is intended to work.

With scores of SMEs and entrepreneurs successfully protecting their IP at the PCC, do you predict wider implications for the UK economy?

I am not an economist. Professor Ian Hargreaves’ report of May 2011, Digital Opportunity, emphasised the importance of IP for growth and placed a particular emphasis on the crucial importance of small and young innovative firms. The point of the PCC is to facilitate access to justice in IP for these smaller businesses.

The importance of access to justice is that it means a small organisation can be confident that it is worth investing in creative and innovative ideas. That is because the cost of protecting the fruits of that innovation and creativity are not so prohibitive that the organisation is forced to stand by powerless and watch its rights being infringed. It also means that small innovators who are wrongly threatened with IP claims by someone larger are not forced to back down just because they cannot afford to defend themselves.