Representation in the IPEC Small Claims Track

Royal Courts of Justice

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Jane Lambert

In July 2014 the HM Courts and Tribunal Service published its Guide to the Intellectual Property Enterprise Court Small Claims Track  I have written a lot of articles and given a lot of presentations about that court and its predecessor, the Patents County Court, over the last two years and you will find links to those articles at Patents County Court - the New Small Claims Track Rules 20 Sept 2012.

In this article I will discuss the anomaly that while anyone in the world can appear at a hearing on behalf of a party in the small claims track in most causes of action only a solicitor or other authorized litigator or the party itself can file claim forms or statements of case in that track.  That restriction excludes patent and trade mark attorneys who are not authorized to conduct litigation by the Intellectual Property Regulation Board (see Rights to conduct Litigation and Advocacy). I will also consider whether the right of lay representatives to appear as advocates before the Patents County Court continues to apply to proceedings before the Intellectual Property Enterprise Court ("IPEC") small claims track.

S.12 (1) of the Legal Services Act 2007 includes "the exercise of a right of audience" and "the conduct of litigation" in the list of reserved legal activities.  S.13 (2) of the same Act restricts reserved legal activities to persons who are authorized in relation to the relevant activity ("authorized persons") and persons who are exempted in relation to that activity ("exempt persons").  It is an offence under s.14 (1) for anyone other than an authorized person or an exempt person to carry on a reserved legal activity.

Paragraph 3 (1) of Schedule 2 to the Act defines a "right if audience" as "the right to appear before and address a court, including the right to call and examine witnesses".  In other words the sort of work that barristers do.  Paragraph 4 (1) defines "the “conduct of litigation” as

"(a) the issuing of proceedings before any court in England and Wales,
(b) the commencement, prosecution and defence of such proceedings, and
(c) the performance of any ancillary functions in relation to such proceedings (such as entering appearances to actions)."

These are activities traditionally conducted by solicitors.  Activities in relation to litigation such as drafting statements of case and conducting correspondence are not mentioned in the Schedule.

Schedule 3 to the 2007 Act provides a set of rules to determine whether a person is an exempt person in relation to a reserved legal activity.   Paragraph 1 (3) (b) provides that a person is an exempt person if "he has a right of audience before that court in relation to those proceedings granted by or under any enactment."  Paragraph 2 (3) (b) makes similar provision in relation to the conduct of litigation.

S.11 (1) of the Courts and Legal Services Act 1990 provides:

"The Lord Chancellor may, with the concurrence of the Lord Chief Justice, by order provide that there shall be no restriction on the persons who may exercise rights of audience, or rights to conduct litigation, in relation to proceedings in a county court of such a kind as may be specified in the order."

The only order under that section that I have been able to find is  The Lay Representatives (Rights of Audience) Order 1999 SI 1999 No. 1225. Art 3 (1) of the Order provides:

"Subject to paragraph (2), any person may exercise rights of audience in proceedings dealt with as a small claim in accordance with rules of court."

However, paragraph (2) of the article states that:

"A lay representative may not exercise any right of audience:–
(a) where his client does not attend the hearing;
(b) at any stage after judgment; or
(c) on any appeal brought against any decision made by the district judge in the proceedings."

This is reflected by paragraph 3.2 (1) of the Practice Direction 27 - Small Claims Track:

"A party may present his own case at a hearing or a lawyer or lay representative may present it for him."

"Lawyer" is defined by paragraph 3.1 (1) (a) as "a barrister, a solicitor or a legal executive employed by a solicitor" but not a patent or trade mark attorney and a "lay representative" which would include such an attorney as "any other person".

While the Patents County Court existed there can be no doubt that lay representatives could rely on The Lay Representatives (Rights of Audience) Order 1999 to appear as advocates before the small claims track. However, it is uncertain that they can still do so before the small claims track of IPEC because s.11 of the Courts and Legal Services Act 1990 which was the statute under which the 1999 Order was made applies only to proceedings in the county courts and  IPEC is now part of the Chancery Division (see Jane Lambert "What does the Intellectual Property Enterprise Court mean for Litigants in the North West?" 12 Oct 2013 IP North West). Paragraph 63.27 (4) provides that Part 27 (small claims track) shall apply to claims allocated to the small claims track in the Intellectual Property Enterprise Court with certain modifications none of which addresses paragraph 3.2 of the Part 27 Practice Direction.

Although the District Judge can always hear a lay representative in a specific case she does not appear to be obliged to do. Further, there appears to be no right for anyone other than a solicitor or other authorized litigator (which can nowadays include certain counsel and patent and trade mark attorneys) to file, prosecute or defend such proceedings. Should anyone wish to discuss this article or IP Litigation in general he or she should call me on 020 7404 5252 during normal office hours or message me through my contact form.

Festival of Business

Chiswell Street Brewery

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Yesterday I attended the Daily Telegraph Festival of Business at The Brewery in Chiswell Street. It was the third time I had attended the event. In 2011 and 2012 the event was held at G-MEX in Manchester which is my home town. Last year the event moved to London and I followed it down to the capital.

The format was the same as in previous years. There were four keynote speakers and two breakout sessions. Each delegate was issued with a tablet computer for the day which had to be returned at the end. These took the place of bags and bumf which I for one like to read on the way back home. They also replaced a note pad which would have been fine except that my tablet had a German keyboard which is slightly different from the QWERTY layout making it impossible to type quickly. The tablet was also the only way the audience could communicate with the chair in plenary sessions which made it very difficult to ask questions from the floor.

As I had a meeting earlier in the day I missed the first two keynote speeches and the first breakout session. According to the agenda, Nigel Wilson, chief executive of the Legal and General Group, spoke about The Changing Shape of the UK, and Sir Charlie Mayfield of the John Lewis Partnership discussed The Changing Workplace.  I was able to read Dr Wilson's slides on the tablet but not not Sir Charlie's.

I did, however, attend a wide ranging and fascinating discussion between Sir Martin Sorrell and Roger Bootle which covered the economy, the EU and a list of what the speakers called "black swans" or potentially destabilizing events such as ISIS and the recent pro-democracy demonstrations in Hong Kong. Both seemed to think that the economic outlook for the UK was rosy despite the sluggish performance of much of the rest of Europe, Japan and many other countries. It was a view shared incidentally by most of the audience in a snap poll. I'm not so sure that that they are right.  It is the view of a London audience and London has done OK over the last few years. I doubt if it would have been shared to the same extent in other parts of the country. Secondly, the strength of the recovery in the UK seems to be driven by short term factors like house prices and restocking. I don't see how the recovery can possibly be sustained if Europe is stagnant and China is slowing down. Moreover British productivity has declined n relation to our competitors. I found the optimism in the auditorium overdone almost to the point of complacency,

One of the factors  that is bound to put a break on investment in this country in my humble opinion is uncertainty over our continued membership of the EU. The disruption that would be caused were we to leave would be far reaching. Take intellectual property for example. British businesses have enjoyed the benefits of uniform trade mark protection enforceable throughout the 28 member states in the British courts for 20 years and design registration for well over 15 and the European Patent Office will soon be able to grant unitary patents for nearly all the EU member states. All of that and very much more would be lost on a British exist. Sir Martin was aware of that disruption and warned of the risk to inward investment.  Roger Bootle was much more equivocal. If we could get rid of anthems and the notion of ever closer union then it might be worth staying, he argued, but if (as is probable) we can't he would campaign for us to leave.

Although I was with Sir Martin on Europe he made one remark that I could not understand at all. He said that indemnities against intellectual property infringement were a major menace to businesses because it put them at the mercy of patent trolls.  "Patent trolls" is a nickname for "non-practising entities" (that is to say businesses that hold patents but do not work them). They are a problem in the USA because patent specifications do not have to be published before grant and there is no possibility of recovering costs from an unsuccessful claimant but not here. In this country an NPE would probably be required to give security for costs and in any case it is possible to insure against patent infringement claims in any country.

Sir Martin classed these indemnities with late payment of bills which seemed to be an increasing problem. A poll was taken as to whether late payment was a problem for delegates in the room.  On that point there was overwhelming agreement.

The second keynote speech that I attended was on technology.  Tim Steiner of Ocado led the discussion and he was accompanied on the stage by Phil Jones, Managing Director, Brother UK, Kathryn Parsons, Founder and Co-CEO, Decoded and Chris Poad, Director, Seller Services at Amazon UK. Referring to the Global Innovation Index 2014, Mr Jones said that the UK was the second most innovative nation in the world. He omitted to say that the criteria for the index is very broad and contains factors such as "institutions" and "economic sustainability" that are only remotely connected with developing new technology or that the UK ranks below not just the USA, China and Japan in the number of European patent applications or even countries of similar size such as Germany, France and South Korea but also the Netherlands with one third of our population or Switzerland with one eighth. I challenged that assertion with an intervention through my tablet but the chair chose to ignore it.

Another issue that I challenged was on the participation of women in computing. Kathryn Parsons was congratulated for being the only woman on the panel. It was inferred that she was somehow facilitating female participation in IT. In fact there was far greater female participation in the early days of computing when women programmed in object code for LEO and Dame Steve Shirley established F International which was overwhelmingly female. Again. I tried to make that point through my tablet but was ignored by the moderator.

The one breakout session that I managed to attend was Financing Growth. I had originally intended to go to the Google Clinic which I had enjoyed in Manchester but I bumped into futurologist Tom Cheeswright who had given a very good talk at Start Smart in Salford the previous Friday. He was on his way to the funding seminar so I tagged along with him.  There were presentations from two business leaders who had raised funding one through some kind of bond which was offered to the company's and James Meekings of the Funding Circle. The chap who had raised money by his bond issue seemed to criticize the regulatory structure in this country which prompted an intervention from me that the provisions regulating public offerings in the Companies Act 2006 and the Stock Exchange rules were there fir a reason and that there was a risk that uncontrolled public offerings might turn into a bubble like tulips and stocks in the South Sea Company 

Overall I enjoyed the day though perhaps not as much as in previous years.  When the event was in Manchester it was held at G-MEX which is a converted mainline railway terminus with plenty of space.  The Brewery is much smaller.  Some would say it was more intimate. Others would call it cramped.  The only way to reach The Porter Tun, the main auditorium, was by means of a single staircase or a single lift and both were congested at times. Last year the main speaker was the Chancellor of the Exchequer and while there was nothing wrong with this year's keynote speakers they did not carry quite the same cachet. Another way in which the event could be improved would be by losing the tablets. They were an amusing novelty 3 years ago but now they get in the way of communication.

If anyone wants to read another account of yesterday's events and watch some videos there is a Festival of Business page on the Daily Telegraph website.