IPEC: the tough new broom

It was never going to be easy for Richard Hacon. In 2013, when WIPR broke the news that he was replacing Colin Birss as the full-time judge at the Intellectual Property Enterprise Court (IPEC), he was warmly welcomed.

To follow Birss, in charge of the Patents County Court before it was rebranded as IPEC, meant superseding a man whose dedication produced what was widely seen as a highly successful three-year tenure. However, the former IP barrister in London was unlikely to be fazed by the task.

Hacon’s career had taken him to the most senior English and European courts, where he represented tech titans such as Apple and biotech big guns including Biogen. IPEC, in contrast, is aimed mostly at small and medium-sized enterprises (SMEs), handling claims worth up to £500,000 ($856,000) and capping fines for losers at £50,000 ($85,600).

As Hacon explains, since he took the reins in January 2014 the court has become “extremely busy”, with figures showing that just 96 cases were submitted in 2010, and 152 were filed in 2011 before the figure rose to 170 the next year. In 2013, 95 disputes were filed, but this draft total is likely to be revised upwards and surpass 2012’s total.

In the face of this increasing workload, Hacon says there is a discernable positive trend.

“The number of cases filed in the regular England & Wales High Court is still going up, so it’s safe to say that a very high proportion of IPEC litigation probably wouldn’t have happened at all otherwise.”

On the other hand, he adds, there is a risk that a rising number of cases could increase the backlog of work “and at some point that will need to be addressed”.

For now, Hacon says, he can cope. This resilience is partly aided by his tough case-management style, the need for which was amplified early on, particularly when some parties assumed that “if they weren’t quite prepared for a trial, the solution was to adjourn”.

“Although I have adjourned a trial ... I have tried to encourage a culture of ‘if there is a date for something—whether it is a case-management conference or a trial—they have to be prepared. If they’re not, it’s too bad’,” he says.

“That’s because once you create that culture, people do turn up and they are prepared, the dates in the diary stay fixed, and things get done when they should be done.

“In an overwhelming proportion of cases, that is exactly what happens,” he explains.

Hitting tight deadlines is necessary, Hacon says, in order to keep proceedings running smoothly, and if he can implement that rigid structure at the start of a dispute, both sides have a very clear idea of each other’s cases early on.

“That means it is a very good time to think about a settlement. In the High Court, leading up to a trial there is the thought that ‘we can think up another argument, or maybe the other side will think up another argument’. There is a sense of uncertainty because the cards are not so completely on the table, so there is possibly less likelihood of a settlement.

“In IPEC, however, the cards are on the table very early,” he says.

However, not enough litigants consider how beneficial a settlement might be, according to Hacon.

“The reason it is underused is a force of habit; people have been leaving decisions like that until very close to the door of the court. So I encourage litigants to think hard about what their position is once the case-management conference is done,” he says.

Change of scenery

Case management is a key part of IPEC judge’s role, as each case is meant to last only two days. But managing a case is just one of the changes Hacon has had to cope with, along with dealing with litigants who defend themselves in person.

“I used to appear occasionally in court with litigants on the other side, but it’s a long time since that’s happened. In IPEC that crops up quite a lot, and that is a different technique altogether, particularly if there are litigants in person on both sides. It’s different from when litigants are represented by counsel or solicitors.”

Individuals often don’t have any particular grasp of how a case should move forward in an efficient way, Hacon explains, so he must ensure that things progress “without getting too bogged down in this or that rule”.

He adds: “As a barrister, you spend your entire time thinking up the best arguments for your client, and trying to make them as attractive as possible. What you never have to do is decide what the right answer is—in fact, that can almost be a distraction. As a judge, you’re usually being presented with two sides of the argument and your entire job is to make up your mind on what the right result is.

“It’s good to have to do that; I have enjoyed the change, partly because, as with any job, you get into certain patterns, and now that pattern has been broken, and that’s a good thing.”

Passing off

Of the cases he has decided to date, Hacon has not resolved any major areas of law, although he mentions a passing-off case between Moroccan Oil and Aldi as one that offered him the chance to assert his views on passing-off law.