The Patents court has recently looked at the niggly issue of the Defendant’s request to transfer cases to the costs-capped Patents County Court. There is obvious advantage to a potentially infringing defendant in transferring to the PCC where the Claimant’s costs are capped and where there is significant emphasis on cost reduction and speedy un-complex trials. Conversely, applications to transfer to the PCC are often opposed by Claimants who wish to prosecute the trial unfettered as to the amount that they can spend on witnesses and evidence and who wish to have unlimited damages.
Mann J referred to the criteria for a transfer order set out in the Civil Procedure Rules CPR r.30.3(2) and highlighted the following:
1) the aim of the PCC is to deal with cases where the issues are ‘straightforward’. This will be considered on a case by case basis and in this instance (Crocker Enterprises Ltd v Giordano Poultry-Plast SpA) his view was that whilst the patent issues appeared relatively straightforward, there were also design right claims which added an additional layer of complexity. Accordingly, the case could not be considered to be straightforward.
2) the Claimant had begun its case in the Patent Court because it wanted it there and this was a significant factor to be considered. The Claimant had the opportunity to bring the claim in the PCC and chose not to. Therefore if the Claimant wished to continue its action in the Patents Court of the High Court, that option should not lightly be taken away.
3) whilst one of the criteria for success application to transfer is the low value of the claim, this was outweighed by the issues of complexity and cost-capping.
Having acted for Claimants facing the decision as to which court to bring a claim, and for Defendants applying to transfer to the PCC in order to protect themselves on costs, this is always an interesting conundrum. Our experience shows that as with each legal action, the issues in each case should be considered carefully prior to such a decision being made.