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. Now that we are several months into the "new normal", 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) currently 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. As this article discusses, courts are now at the stage where they can host attendees of hearings, but parties will need to be mindful of the social distancing measures in place.
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'."
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, although the courts have been known to take note of parties' preferences. To date, the choices have been as follows:
- fully remote hearings with the Judge at home;
- remote hearings with the Judge in their office or Court in the Rolls Building;
- hybrid hearings with the Judge and some participants in Court, and some participating remotely; and
- normal physical hearings in which all the participants attend in person.
During lockdown, option 2 has previously been the most popular approach, but as the pandemic continues, and lock-down restrictions ease, courts are increasingly looking to open their doors once again to host hearings.
If physical attendance at court is possible, attendees will be of a set, limited number as permitted by the relevant court and will need to be mindful of the social distancing measures put in place by the court they are attending. The Royal Courts of Justice has issued guidance on social distancing arrangements, including:
- Inter-party discussions should take place before court or away from it: A more limited opportunity for pre-hearing discussions (with more limited access to consultation rooms) means it is recommended that the necessary discussions between parties have either taken place before the hearing or arrangements are made for discussion to take place (over phone for example) away from the building.
- No seat hopping: Attendees must only sit in designated seats (which cannot be changed).
- Entering and exiting the courtroom: Attendees must follow the court staff's instructions, including about entering and exiting the courtroom.
- Face coverings: Attendees must follow up to date guidance about the use of face coverings.
- Washing your hands: Attendees should wash their hands frequently.
- No dilly-dallying: Attendees must leave the building as soon as the hearing has finished for the day or concluded
Commencing proceedings and applications
Many stages of the modern litigation process continue to proceed 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 courtroom if attendance at a court is still not possible.
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
It has been 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 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, a scroll through the Business and Property Courts Rolls Building Cause List shows how many hearings are proceeding using audio or videoconferencing platforms.
From the High Court to the Supreme Court, the courts are all taking a pragmatic approach to virtual hearings in dealing with the practical logistics involved. We also set out below a list of tips if you have virtual hearing coming up:
- Your judge's clerk: It is worth finding out who the judge is that will be overseeing your hearing sooner rather than later, so you can open up a line of communication with the judge's clerk. This will be extremely useful for arranging the logistics of the case, including setting up 'skype' test links for attendees or having someone to answer queries not already addressed in the court's guidance.
- Bundles: Some judges in the High Court are still requesting hard copy bundles, in addition to e-bundles (again it is good to check with your judge's clerk what the judge's preference is). Our experience is that the Court of Appeal is also still asking for hard copy bundles. For e-bundles, however, avoid the size being too big (to avoid functionality IT issues) and ensure that all 'tabs' are clearly and concisely electronically 'bookmarked' for ease of use.
- Flexibility: Judges and court staff have been demonstrating a lot of flexibility in the timings of hearings, including delaying starts if needed and sitting late when required. A judge may also opt to take shorter and more frequent breaks to address 'screen fatigue'.
- Format: The Courts are most often using the 'Skype for Business' platform, but have been known to switch to other formats upon request (Zoom, for example) if issues are experienced, or another format proves easier to use. It also remains to be seen what the take up of the Court's own new video platform will be in civil cases.
- Transcription: for virtual hearings it is more than ever essential to have transcribers attend a hearing to take a full note of everything said. Real-time feeds of the transcription are also still available upon request, where access is provided in advance and charged on a 'per user' basis.
- IT gremlins: preparations should be made for attendee's connections not being the best on the day of the hearing. If a judge drops off, for example, parties will need to be mindful to repeat any arguments. Ensuring that the judge has a copy of the transcript from the hearing should assist in plugging any gaps. If appropriate, it might be beneficial to have two members of counsel present so that if your lead counsel drops off, the other can point this out to the judge who may be otherwise engaged on bundles, for example, and a short break may be requested.
- Time estimates for hearings: we are seeing that hearings are taking longer than usual, so it may be worth providing longer time estimates (for example, stating that a second day might be required if necessary), although the court is doing well to exercise flexibility on timings, as noted above.
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 government's continuing advice against non-essential travel, these safeguards are less immediately available at present than they would usually be. Judges, more than ever, are keen for parties to have their skeleton arguments (redacted or otherwise) at the ready at the beginning of the hearing for handing to third parties upon request.
The UK IPO
There is still limited access to the UK IPO's buildings but it 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. Delays should be expected for any other form of filing while building access remains limited. Electronic signatures are accepted. Fax services remain suspended until IPO sites are reopened. In respect of services that are not already available online, contact is encouraged via firstname.lastname@example.org. Please note that the UK IPO is unable to accept any payment by cheque.
The UK IPO continues to encourage rights holders and IP professionals to file as normal and to work to existing deadlines where possible. Additional time should be allowed for filings to be dealt with by the UK IPO.
The period of interrupted days, during which deadlines were extended for patents, supplementary protection certificates, trade marks and designs and applications for these rights, ended on 29 July 2020. The UK IPO has made it clear that deadlines will once again need to be met and fees paid.
In particular, the UK IPO announced that it has now reverted to two month periods to respond to new trade mark examination reports issued from 31 July 2020 onwards.
That said, the UK IPO recognises the current challenges facing businesses and will be flexible when it comes to allowing extensions if COVID-19 has caused difficulties. Requests for extensions of time will be considered as favourably as possible on a case-by-case basis.
Temporary fee changes
To support IP rights holders, the following temporary fee changes will be in place from 30 July 2020:
- fees for extensions of time will be zero
- there will be no surcharge for payment of a patent application fee after the date of filing
- fees to apply for reinstatement and restoration will be zero
- for patents and designs, there will be no surcharge for late payment of a renewal fee
- for trade marks, the surcharge for late payment of a renewal fee will be £1
- there will be no additional fee for late payment of supplementary protection certificates
These changes will be in effect until 31 March 2021. Full details on the affected fees is available here.
The UK IPO's forms and fees webpages have also been updated to reflect the temporary fee changes:
Renewals and lapsing rights
The UK IPO has published a renewals deadline table to explain the impact of the period of interruption on renewal deadlines.
There will be no change in practice in relation to the lapsing of rights and there is no change to the periods in which IP rights can be restored or the safeguards which may be available to third parties when rights are restored.
Registration and registration certificates
A number of trade mark registrations were delayed by the period of interruption. The UK IPO expects to register all delayed trade marks (in chronological order) before the end of August, subject to opposition or receipt of third party observations.
More information on the alterations to services for trade marks and designs is available here.
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.
The UK IPO will begin issuing patent renewal letters from 3 August 2020. These letters will be emailed (by agreement) or otherwise posted. Customers are encouraged to proactively manage these renewals, rather than relying on the UK IPO's letters. Email is the recommended form of contact for:
Exception is made for patent applications made subject to directions under section 22 ("national security") and applications where the UK IPO does not have an email address. Further, Grant Certificates and Late Grant letter, certain letters and reports (intended for someone other than the registered address for service) and non-patent literature citations (where allowed) will be posted.
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 implemented a number of measures to assist when filing a new international application (PCT):
- late surcharge fees will be waived where fees are not paid when filing a PCT application
- existing PCT regulations may be used to excuse delays in meeting deadlines due to the impact of COVID-19, e.g. rule 82 quater
- digital correspondence will be used where possible (note: WIPO are also no longer using postal services)
- the UK IPO is speaking to WIPO and other IP Offices about ways it can help customers during this difficult time
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 whilst there is limited access to UK IPO sites. This will, however, be kept under review. The UK IPO has acknowledged that some hearings may not be suitable by these means and may need to be postponed.
The usual Tribunal deadlines for filing evidence or submissions are now back in place. Extensions of time are possible and should be filed in the normal manner.
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.