Small IP Claims
31 Jan 2017, Updated 9 Feb, 13 April 2017
On this page, you should find all the information you could possibly need if you have a small intellectual property ("IP") claim against someone in England or Wales or if someone in England and Wales has a small IP claim against you.
What is a "Small IP Claim"?
A "small IP claim" is a complaint that someone has infringed (that is to say, violated) another person's intellectual property right ("IPR") coupled with a demand that such infringement should cease immediately and a monetary payment of anything up to £10,000.
Examples of Small IP Cases
If someone copies a photo from your website and posts it to his without your permission would be one example (see Someone has stuck one of my photos on his website without my permission. What do I do? 20 Oct 2013). Trading under a business name that is so similar to that of a competing business with the result that people think that one of those businesses is a branch of the other would be another example. However, a patent infringement claim for millions of pounds by one drug company against another would definitely not be a small IP claim for all sorts of reasons.
So what can be done about it?
If anybody has done anything like that to you, or infringed some other IPR you can now take him or her to court without risking thousands of pounds in legal fees and hours and hours of your time that you could better spend on your business. There is now a court called the Intellectual Property Enterprise Court ("IPEC") with a small IP claims track which is much simpler and cheaper to use that other courts.
Where do I find out about this court?
Below you will find links to lots of articles and other materials about the small IP claims court. Most, but by no means, all of them, have been written by me. It is possibly the best source of information about bringing a small IP claim in England or Wales on the internet.
How do I start?
Well, you could start by reading "How to take proceedings in the IPEC Small Claims Track" which I posted to IP South East on 12 July 2014 and the Smail Claims Track Checklist 12 April 2017 on J D Supra. The most important points to note are:-
- make sure you have a valid IPR and that someone has infringed it;
- write politely to the person whom you think may have infringed your right, explain in your letter that you have an IPR and (if possible) enclose with you letter a copy any registration certificate, contract or other evidence on which you rely, point out the infringement and any harm that it has done you and tell that person you would like him or her to stop and maybe compensate you and ask him or her to acknowledge that letter as soon as he or she receives it and to reply in full within a reasonable time warning that you may have to sue if you don't hear from him or her;
- wait to see whether he or she responds;
- if he or she does respond, take note of what he or she says and consider whether he or she has a defence;
- if he or she does not respond or you are not satisfied with the response you may have to sue in which case you should fill our a claim form and particulars of claim exactly as set out in the article that I mentioned above, issue it out of the IPEC court office and serve it as directed.
What happens next?
Wait to see whether the other side defends the claim. If he or she does, consider the defence very carefully before taking it further. It may be wise to negotiate or seek mediation at this stage. If you hear nothing more you may be able to claim judgment in default which will require a hearing if you want an injunction. If you can't settle your differences through negotiation or mediation and you still want to go ahead the judge will probably give you some directions for preparing your case for a final hearing. You follow those directions as best you can and attend the court for a final hearing as and when directed. You will find some tips on how to do that in my article Representing yourself in Intellectual Property cases which should be read in conjunction with A Handbook for Litigants in Person written by several experienced judges and the Bar Council's A Guide to Representing Yourself in Court.
Will I need a Lawyer?
That's up to you. If you have never done anything like this before the answer is probably "yes". The procedure in the small claims track has been simplified considerably but that does not mean that it is simple. Also, intellectual property law is particularly difficult. But litigants in person have succeeded even against lawyers though in many cases the time they may have spent on reading and researching will be out of all proportion to the lawyer's fee.
How much will this cost?
It depends on the value of your claim and how much use you make of a lawyer and experts but it should be a lot less than in any other court. Hundreds, maybe a thousand pounds or two but not much more.
Can I get any of this back from the other side?
Not a lot. As a general rule, costs are limited to court fees, loss of earnings, travelling expenses, counsel or solicitors' fees up to £260 where an injunction is sought and experts' fees up to £750.
What happens of I lose?
You can ask the judge for permission to appeal. If she refuses, you can ask the Enterprise judge for permission. Judges have to give written reasons for refusing your request. If you get permission to appeal you make your appeal to the Enterprise judge. You will have to pay some costs if you lose but they will be limited to those I have mentioned above.
If you have ant questions on any of these points I will give you up to 30 minutes of my time absolutely free (see Immediate IP First Aid Nationwide 25 Jan 2017). Call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.
Title and Description
Defend your intellectual property - Take Legal Action Overview of remedies through courts and IPO
Representing yourself in Intellectual Property cases Covers all courts and tribunals and not just the small claims track
Guide to the Intellectual Property Enterprise Court Small Claims Track Official guide to IPEC practice.
How to bring or defend a small Intellectual Property Claim in the Intellectual Property Enterprise Court Step by step guide to actions in the small claims track.
The Patents County Court Small Claims Track Case histories of two claims in the IP small claims track
Civil Justice Centre or the Rolls Building The value of the small claims track for businesses in the North West
How Small Businesses in Yorkshire can protect their Intellectual Property Presentation and step by step guide to using the IP small claims track.
New small claims track for businesses with IP disputes Announcement of IP small claims track
Dept. for BIS
Patents County Court - the New Small Claims Track Rules In-depth review of IP small claims tracks rules