COVID-19 is an unprecedented crisis impacting many countries. However, in the UK, maintaining access to justice is considered so important that overcoming the social distancing hurdles is generating a speedy evolution in procedural law and practice. The intellectual property courts and the UK Intellectual Property Office (UK IPO) have adapted quickly to use technology to minimise disruption to normal business. Here is what you need to know.
Intellectual property disputes in the courts
New interim law and amendments to the Civil Procedure Rules
The Civil Procedure Rules (CPR) govern the conduct of civil litigation in the Courts of England and Wales. To enable court business to continue to operate by using videoconferencing platforms rather than in physical court rooms, a new CPR Practice Direction "51Y" has been introduced.
PD 51Y is a technical amendment to existing CPR rules. It clarifies the manner in which the court may exercise its discretion to conduct hearings remotely and in private. It also clarifies that where a media representative is unable to access proceedings remotely while they are taking place, they must be recorded, (where practicable) in a manner directed by the court. Any person may apply to the court to access such a recording in a court building, with the consent of the court.
PD 51Y is a temporary measure and will remain in force only for as long as the Coronavirus Act 2020 remains in force.
Steps taken by Her Majesty's Courts Service
Her Majesty's Courts and Tribunals Service (HMCTS) oversees the operation of the Courts in England and Wales.
Noting that open justice is a fundamental principle in our courts and tribunals system, it remains HMCTS's position that a network of priority courts will remain open during the coronavirus pandemic to ensure the justice system continues to operate effectively. This includes the Rolls Building in London, where the High Court's Chancery Division, including the Patents Court and the Intellectual Property Enterprise Court, usually sit.
Media and members of the public will be able to attend priority court hearings in person, if safe to do so in line with Public Health England guidance, thereby ensuring the principle of open justice.
HMCTS has issued guidance on telephone and video hearings during the coronavirus outbreak, which supplements the measures of PD 51Y in practical ways, for example:
"For videoconferencing we have started using Skype for Business on HMCTS and judicial systems. Participants in a hearing do not need Skype for Business to join these videoconferences, however they will need the free Skype meetings app. Each participant will receive instructions and a link to click to join the hearing, as a 'guest'."
A new, bespoke ‘cloud video platform’ (CVP) is also starting to be used for hearings.
Where it is not possible for a media representative to attend court in person, judicial consideration will be given to them joining a hearing remotely or a transcript provided afterwards. With the permission of the judge, an audio recording of a hearing can be made available to be listened to in a court building.
The Business and Property Courts (which include the Rolls Building intellectual property courts noted above) have also published a protocol on remote hearings, which states:
"Available methods for remote hearings include (non-exhaustively) BT conference call, Skype for business, court video link, and ordinary telephone call. But any communication method available to the participants can be considered if appropriate."
It is, however, in the court's discretion to decide on a case by case basis how a hearing or trial proceeds.
Commencing proceedings and applications
Many stages of the modern litigation process are proceeding as usual, for example the electronic filing system used in intellectual property litigation continues to operate in the usual way, proceedings may be started and progressed, and documents may be filed with the court and served electronically on the other side. However, decisions will need to be taken about the conduct of hearings and trials that would usually be heard in a physical court room.
Having said that, parties need to be sensible and act reasonably. The Courts have indicated that a dim view will be taken of 'sharp practice' during this period where a party may seek to gain an unfair advantage by serving proceedings, applications or correspondence 'by hand' in the knowledge that offices are shut. The Courts have said that they are prepared to provide robust responses to such conduct so parties should be mindful of this.
A look at what has been happening in practice
In recent weeks, it is our experience that short court hearings have been proceeding on audioconferencing or videoconferencing platforms, enabling the usual progress of intellectual property dispute resolution to continue.
Practice regarding the handling of more complex hearings, such as trials involving cross-examination of witnesses, is of course in the early stages and can be expected to develop.
So, for example, the Patents Court has recently vacated the date of a trial to hear and determine the 'FRAND' aspects of the Conversant v Huawei standards essential patent dispute. This is a case that has attracted considerable interest from non-parties. The judge was concerned that fundamental aspects of a common law trial, including the need for it to be conducted in public and the opportunity for cross-examination of witnesses, would not be adequately met by Conversant's proposal that the court deal with the dispute largely on the papers.
However, the trial of another high value commercial dispute, National Bank of Kazakhstan v The Bank of New York Mellon, is reported to be proceeding by zoom. A scroll through the Business and Property Courts Rolls Building Cause List shows how many hearings are proceeding using audio or videoconferencing platforms.
Attendance at court hearings by third parties
The steps taken by the Courts to move hearings to online platforms is enabling the course of dispute resolution between litigants to proceed largely as normal.
However, the usual ease with which the public can attend and observe proceedings in which they are not a party is being impacted.
The Business and Property Courts protocol on remote hearings states:
"The hearing can be made open to the public if technically possible, either by the judge or the clerk logging in to the hearing in a public court room and making the hearing audible in that court room, or by other methods. But in the exceptional circumstances presented by the current pandemic, the impossibility of public access should not normally prevent a remote hearing taking place. If any party submits that it should do so in the circumstances of the specific case, they should make submissions to that effect to the judge."
In practice, where notice from a third party to attend a hearing is deemed too short, the Courts have declined the request but have instead ordered that the Claimant provide the third party with a non-confidential version of the transcript, as soon as reasonably possible after the hearing. Judges may also direct that the transcript be made available at public expense where appropriate. With a few days' notice, there is a better chance of a non-party being able to listen in on an audio or video hearing.
It is possible for the judge to order that the audio or video platform be opened in a court room, for attendance by members of the public. A recording of a hearing is similarly accessible in court building, with the consent of the court. However in view of the restrictions on non-essential travel, these safeguards are less immediately available at present than they would usually be.
The UK IPO
The UK IPO has closed access to its buildings but remains operational, with the majority of its services being unaffected by the physical closure. The IPO's staff are equipped to work from home.
The UK IPO encourages the use of online services and digital communications. Electronic signatures are accepted. Postal, fax and paper services have been suspended until IPO sites are reopened. In respect of services that are not already available online, contact is encouraged via firstname.lastname@example.org.
The UK IPO has encouraged rights holders and IP professionals to continue to file as normal and to work to existing deadlines where possible, in order to avoid a surge of work once the interruption period ends.
Nevertheless, the UK IPO has said that due to the unprecedented disruption, (subject to the exceptions noted below) deadlines for patents, supplementary protection certificates, trade marks, designs and applications for these rights, which fall on an interrupted day. Renewal notices are not currently being sent.
The next non-interrupted day will be notified by the UK IPO, giving a minimum of two weeks' notice. The situation will be reviewed on 22 June 2020, at which point the UK IPO will either continue the interrupted period or announce that the period will end after a further two weeks. For further information, please see the UK IPO's notice on interrupted days.
Further, the UK IPO announced that it will allow four months to respond to new trade mark examination reports (instead of the usual two months), and extensions are available to reply to designs examination reports.
The interrupted period does not apply to:
- deadlines under the various international IP treaties (e.g. Patent Cooperation Treaty, European Patent Convention, the Madrid system) where the UK IPO is acting as a receiving office; or
- filing dates of IP applications which are filed at the UK IPO and do not claim priority from a previous application (which will be assigned a filing date under the usual rules).
Patent services generally
The UK IPO will send Notice of Publication (A and B) letters by email and encourages users to view IPSUM for documents they are expecting or to check uncertified office copies.
Email is the recommended form of contact for:
Further email accounts will be set up to deal with other services.
WIPO's online Priority Document Access Service (PDAS) should be used for certified office copies.
Screening of applications via the IPO's electronic filing services will continue, as will the issuing of permits for filing patent applications abroad.
The UK IPO has confirmed it will set more generous time periods where legislation allows.
More information on alterations to patent services is available here.
The UK IPO has advised that hearings will continue to take place via telephone, Skype or other virtual methods (where possible) but no further physical hearings will be booked or will take place until 1 June 2020 (this date will, however, be kept under review).
Tribunal deadlines for filing evidence or submissions will be doubled where the IPO has discretion to do so. Extensions of time to appeal trade mark decisions are possible.
More information on alterations to tribunals and hearings is available here.
The situation remains under review
The UK IPO notes that it is keeping an eye on the situation. It will continue to issue updates to reflect any change in its services and to provide more detail where possible.
We are here to help
We will continue to keep you up-to-date in this fluid landscape. If you have any questions about how COVID-19 disruption may impact your IP portfolio or dispute resolution, please contact us.
You can also access our COVID-19: Global Intellectual Property update, providing brief status updates on the IP regulatory bodies in our international jurisdictions.