Matt's deck

Question 1

What is the maximum claim value of the IPEC small claims track?

Answer 1

£10k

Question 2

What is the value range for claims brought before IPEC multi-track?

Answer 2

£10k - £500k

Question 3

What is the minimum value of a claim brought before the Patents or Chancery Courts?

Answer 3

£100k

Question 4

What rights can IPEC small claims NOT hear?

Answer 4

Patents
RDRs
PVRs
Semiconductor topography

Question 5

What costs are available in IPEC small claims?

Answer 5

None

Question 6

What costs are available in IPEC multi-track?

Answer 6

Capped costs up to a maximum of £60k

Question 7

What is the costs regime before the Chancery / Patents Court?

Answer 7

Principle of loser pays the winner’s costs - no cap

Question 8

Outline the four steps for a cause of action.

Answer 8

Duty, Breach, Causation, Loss; or
Right, Infringement, Causation, Loss

Question 9

What is the test for causation?

Answer 9

The ‘but for’ test

Question 10

What are some advantages of ADR?

Answer 10

Cheaper
Quicker
Confidential
Commercially creative solutions Maintains relationships
Avoids litigation risk

Question 11

What are some advantages to pursuing through to trial?

Answer 11

Highest quantum available
Enforceable outcome
Publicity
Precedent

Question 12

What kinds of ADR are available?

Answer 12

Mediation
Negotiation
Arbitration
Walking away
Stop + pay

Question 13

What other tools are available to supplement ADR/court proceedings?

Answer 13

UKIPO opinion
Early neutral evaluation
Expert determination
Media pressure

Question 14

Rule 14.1 a) A regulated person must not submit: statements of fact or contentions that are not…

Answer 14

… supported by the evidence OR instructed by the client
(NB the ‘or’ means ‘and’)

Question 15

Rule 14.1 b) A regulated person must not submit: contentions that he cannot…

Answer 15

… justify as prima facie arguable

Question 16

Rule 14.1 c) A regulated person must not submit: allegations of…

Answer 16

… fraud - unless instructed to + prima facie arguable

Question 17

What is the first stage of the two-stage approach to conduct issues?

Answer 17

Decline to do as instructed (and explain why to client)

Question 18

What is the second stage of the two-stage approach to conduct issues?

Answer 18

Cease to act for the client

Question 19

Which court limits disclosure?

Answer 19

IPEC - ‘specific disclosure’
(NB not the same as a request for specific disclosure)

Question 20

What are the three forms of service of a document, in preferential order?

Answer 20

Personal service
Last known address
First class post

Question 21

Which court and track does not offer interim injunctions as a remedy?

Answer 21

IPEC small claims

Question 22

What rights can IPEC multi track NOT hear?

Answer 22

None - IPEC multi track can hear claims relating to any type of IP right

Question 23

What rights does the Patents Court handle?

Answer 23

Patents
RDRs
PVRs
Semiconductor topography

Question 24

What rights does the Chancery Court handle?

Answer 24

TMs
URDRs
Passing off
Copyright

Question 25

What is the time bar period on bringing claims before IPEC?

Answer 25

Six years - claim must be issued six years from cause of action

Question 26

What are the pre-action stages of litigation?

Answer 26

Letter of claim Letter of response

Question 27

What stages make up the Statement of Case of litigation?

Answer 27

Claim form + particulars Defence (+ counterclaim) Reply (+ defence to counterclaim

Question 28

What form must be completed prior to the case management conference?

Answer 28

Precedent H (costs)

Question 29

What stages make up the Evidence stage of litigation?

Answer 29

Disclosure Inspection Witnesses of fact Expert report

Question 30

What stages make up the Trial section of litigation?

Answer 30

Pre-trial review Trial preparation Skeleton arguments Trial Judgment Costs Appeal

Question 31

What occurs after the Statement of Facts stage but before the Evidence stage of litigation?

Answer 31

Case Management Conference

Question 32

What comes out of the Case Management Conference?

Answer 32

Case summary Case Management Order (CMO) Directions questionnaire (not IPEC_

Question 33

Standard disclosure requires the parties to disclose...

Answer 33

(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.

Question 34

What is the three-part test for Legal Advice Privilege?

Answer 34

Is it confidential? Is it created between lawyer and client? Is it created for the dominant purpose of legal advice?

Question 34

What term encompasses Legal Advice Privilege and Litigation Advice Privilege?

Answer 34

Legal Professional Privilege

Question 35

How is 'client' defined in the Legal Advice Privilege test?

Answer 35

Narrowly - only senior members of the client company capable of giving instructions

Question 36

How is 'legal advice' defined in the Legal Advice Privilege test?

Answer 36

Broadly - anything in which the lawyer is using the legal context to advise

Question 37

What is the three-part test for Litigation Advice Privilege?

Answer 37

Is it confidential? Is it created with litigation in reasonable prospect? Is it created for the dominant purpose of litigation?

Question 38

Response letters should include

Answer 38

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.

Question 39

How must a Part 36 offer be made?

Answer 39

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.

Question 40

What is the privilege status of a Part 36 offer?

Answer 40

Without prejudice, save as to costs

Question 41

Consequences of claimant’s failure to beat a defendant’s Part 36 offer at trial in the high court?

Answer 41

Defendant is entitled to: costs from the date on which the period for acceptance of the offer expired; and interest on those costs.

Question 42

Consequences of claimant beating its own Part 36 offer at trial in the high court?

Answer 42

Claimant is entitled to: interest on damages; costs from date of expiry of offer; interest on costs; additional damages up to £75k

Question 43

Consequences of claimant’s failure to beat a defendant’s Part 36 offer at trial in IPEC?

Answer 43

Nothing - cost cap remains

Question 44

Consequences of claimant beating its own Part 36 offer at trial in IPEC?

Answer 44

Cap may be raised 25% from £60k to £75k

Question 45

How may a confidential document be handled in disclosure?

Answer 45

A confidentiality order may be issued

Question 46

What documents are eligible for disclosure?

Answer 46

Those within a party's control and that can be found with a reasonable search

Question 47

What are the penalties for non-compliance with pre-action procedure?

Answer 47

Adverse case management orders; Costs sanctions; and Deprivation or lower interest on costs won.

Question 48

What is the deadline to serve a Defence in IPEC and Patents courts?

Answer 48

42 days from deemed service of claim

Question 49

What is the deadline to serve a Defence in Chancery court?

Answer 49

28 days from deemed service of claim

Question 50

When might the IPEC multi-track costs cap not apply?

Answer 50

Where the court considers that a party has behaved in a manner which amounts to an abuse of the court’s process