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The fourth thing you need to know about enforcing IPR in Scotland: Cost and timescales

The fourth thing you need to know about enforcing IPR in Scotland: Cost and timescales

"How much will it cost and how long will it take?" If I had a £1 for every time a client asked me that at the commencement of a court action…

Of course, it is an entirely appropriate and reasonable question, which any sensible client should be asking before embarking on the litigation journey. Whilst you would be able to answer this question with laser precise accuracy in respect of English proceedings with the “benefit" of the Jackson costs budgeting reforms, you may be less clear of the position in Scotland. We thought it might be helpful to provide you with a summary of the position in Scotland should your clients ever need to consider enforcing their IP north of the border.

Court fees

One significant difference between our jurisdictions relates to the charge imposed by the court to commence a court action. We are aware that recent increases to court fees in England have caused quite a lot of debate and controversy, and in some cases we understand the charge can be as high as £10,000. In Scotland, we have a flat signet fee of £310 for all actions in the IP Court, no matter what value. As such, if your client needs to raise an action for tactical reasons or to manage "groundless threats" risks, and has the choice of raising in Scotland or England, the relatively insignificant court costs of commencing proceedings in Scotland are likely to be attractive.

Cost Budgeting (or lack of)

We are aware that the operation and implementation of the Jackson Reforms have caused significant issues for English practitioners. Jackson does not apply in Scotland and there is currently no equivalent of cost budgeting in this jurisdiction. The Taylor Report has recommended a similar regime to Jackson but nothing has yet been put in place. As such, there is no judicial involvement in budgeting of costs (known here as expenses) in the IP Court.

Given the lack of scope for recovery of pre-action costs, rights holders in Scotland often choose to have stronger claims brought into court more quickly to "trigger" the recovery of expenses. Whilst we would typically involve our internal law accountant in providing a detailed breakdown of costs involved in each stage of litigation, not having to agree that with the other side certainly appears to make it easier to have an action commenced in the IP Court as compared to the High Court.

Timescales

Our understanding is that whilst IPEC was initially a speedy dispute resolution forum boosted by Sir Colin Birss' impressive work rate, its growth in popularity has caused some congestion issues with the average duration of cases taking more than a year. Indeed, the attraction of the High Court for Russian oligarchs and big pharma has caused a degree of congestion there also. Feedback from clients engaged in UK wide IP enforcement is that the Scottish courts can compare favourably on this front.

Certainly without pre-action protocols and discovery, getting an action off the ground and into court appears to be quicker in Scotland than in England. If a rights holder's objective is to secure interim orders this can be a significant advantage. However, in more complex cases we have found that the Scottish court process delaying document recovery, less judicial specialist expertise and relatively light-touch judicial management can mean that these cases will take longer to resolve as compared with such complex cases in England.

Costs/Expenses - Recovery

The awarding of expenses in Scotland is entirely at the discretion of the court. The general rule in Scotland is the same as in England in that expenses follow success. A successful party in Scotland would likely recover 50% of their spend on solicitors and 100% of their spend on counsel.

The Rules of the Court of Session provide that a higher than normal rate of expenses can be recovered in specific circumstances, if for example the case is of sufficient importance to the successful party or if the unsuccessful party's conduct (or the conduct of its solicitor) has been particularly blameworthy.

We do not have an equivalent of the IPEC's court cap and appreciate that this is popular with clients considering embarking on enforcement of their rights.

By Colin Hulme
Partner

Burness admin