IP litigation in a pandemic – going digital?

Over summer Appleyard Lees conducted three trials in the Intellectual Property and Enterprise Court, which were held remotely following the restrictions on movement in the UK imposed by the Health Protection (Coronavirus, Restrictions) (England) Regulations 2020.

This article explains how court proceedings in England and Wales can be conducted digitally and considers how the pandemic may result in permanent changes to working practices going forwards.

Home working and clients

In practice many law firms are particularly well suited to conducting business via home working. A solicitor or attorney’s work is principally conducted by correspondence and the vast majority of legal correspondence is sent by email.  Many firms already work on a paper-light or paper-free basis with incoming post scanned and stored electronically.  Case management systems are held on secure private servers which can only be accessed by password-protected computers which are members of the virtual private network on which the server is located.  Remote conferencing facilities or video conferencing apps, such as Microsoft Teams, Skype for Business or Zoom can enable face to face contact with clients.

Execution of Court documents and forms

A solicitor or attorney has authority to act on behalf of its client as an agent, on receipt of express instructions from the client, or impliedly through course of dealing.  As an agent a solicitor can execute a number of documents on the client’s behalf remotely, including most contractual agreements.

Certain court documents are required to be signed by a statement of truth, including statements of case, disclosure statement and witness statement.  Such documents can be signed by an attorney on the client’s behalf who by doing so is warranting that the party understands the implications of signing a statement of truth and that proceedings for contempt may be brought against a party for knowingly making a false statement.  For witness statements, however, a statement of truth must be signed personally by a witness (Practice Direction 22, paragraph 3.2).  CPR 5.3. provides that where any court document requires a signature, that requirement will be satisfied where the signature is printed by a computer or other mechanical means.  This means that electronic signatures can be used. The easiest method is for the client to supply a clear image on a jpg file of a handwritten signature and for this to be kept on file and used by the attorney where the client provides instructions that it wants a document to be executed.

Filing and serving Court documents

CE-filing

For documents that are to be filed in the Chancery Division of the High Court including the Intellectual Property Enterprise Court, PD 51O provides for an electronic working pilot scheme, which has been in place since 2015.  Documents must be filed electronically and payments can be transferred using dedicated court account numbers.

Service

Service of documents by email is only permitted where consent is given by the other party/its legal representative. Such consent cannot be implied by frequent email correspondence between two sets of attorneys, although it may be where the email address has been specified as an address for service on a court form.

The provisions relating to service by email are outdated and the advantage of serving by email includes using delivery and read receipts to prove when a document has been sent. It is likely in the present working environment that a party refusing to accept service by email will be considered to have behaved unreasonably, but it is advisable to seek permission from the Court to serve by an alternative means if consent is refused. Such permission is likely to be granted.[1]

Disclosure of evidence

For large-scale electronic disclosure, involving the transfer of large numbers of documents, there are a number of options available, the principal of which is to make use of cloud server facilities, in the form of data rooms which are already widely used in the Courts as well as for most corporate deals.  Access to a remote data room can be provided on a user by user basis removed for each folder within a data room. Electronic disclosure has been ongoing for some time and for larger trials, is the only cost-effective way of dealing with disclosure where there are large numbers of emails held on servers which have to be disclosed.

Witness evidence

Proofs of evidence are likely to have to be taken over the telephone or by video conference.  Whilst this is common practice in certain cases, from 6 April 2020, witness statements required to be filed in UK Court proceedings are expressly required to state how evidence has been taken, whether in person, or over the telephone.

Mediation

The conduct of mediation is well suited to remote conferencing facilities.  Whilst most mediations will start with a face-to-face meeting, in practice most business is conducted in separate rooms with the mediator shuttling between the parties.  Many mediation providers already offer mediation using Zoom, whereby virtual private “rooms” are set up for the different parties to enter.

Case management

The protocol for the Business and Property Courts of England and Wales which was revised on 19 March 2020, applies to hearings in the Chancery Division and in IPEC.  It stated that the objective is to undertake as many hearings as possible remotely to minimise the spread of Covid-19 and references the use of BT conference calling, telephone calls, Court video link, Skype for Business and Zoom as methods for providing for remote hearings.  The judge, clerk or listing office will, where appropriate, propose a remote hearing of a matter by one of the above (non-exhaustive methods), or provide that the case will proceed in Court with appropriate precautions, or if, due to the number of parties and length of hearing, it is inappropriate to proceed, adjourn the case.

Practice Direction 51Y relates to audio and visual hearings during the Coronavirus pandemic and expressly provides that hearings may be held in private where appropriate until such time as the pandemic ends.

Practice Direction 51Z, introduced in response to the coronavirus pandemic, provides that parties may agree extensions of up to 56 days rather than the normal 28 days without the Court’s permission. However, it is important that any agreed extension does not imperil any trial date.

Under the protocol, trial bundles for hearings and for trial must be filed electronically.  The preparation of a bundle in PDF format requires use of PDF editing software, such as Adobe Pro or Nitro, to page number, bookmark and render such bundles OCR readable (so they are searchable by keyword).[2]  Access to these editing tools are essential for law firms which have traditionally tended to rely upon printing and scanning as non-professionally scanned document will be much larger in size and may not be OCR readable. Trial bundles can be filed by CE file, or sent by link to an online data room, or delivered by USB stick.

Notes from trial

Appleyard Lees was involved in three trials in the Intellectual Property Enterprise Court which were held remotely via Microsoft Teams. The parties provided email addresses and were sent a link shortly before trial to enable remote access. The court also had the facility to enable the trials to take place remotely via Skype and Zoom. It is recommended that a short CMC is arranged in the week before trial to ensure that there are no issues with connectivity for all the concerned parties. The judge’s clerk in IPEC had no issue with arranging this for the convenience of all parties.

The judge and counsel for both parties were visible when making submissions whilst solicitors were present and able to attend trial by their own links, but with video and audio switched off. Witnesses were required to be sworn in and were required to confirm that they had no other documents except their own witness statement to hand. If the judge does not expressly request this, counsel on cross-examination should consider this as an opening question. An additional point worth considering is whether counsel should remain visible whilst the other counsel is providing submissions. This is potentially distracting for the judge/witnesses.

Whilst certain witnesses (and judges) still have a preference for a paper file and this resulted in some duplication of bundling, at trial, the ability to search electronic bundles by keyword, by bookmark and by page number in many ways rendered paper bundles obsolete. With the exception of one large bundle of in excess of 5000 documents prepared by the claimant solicitors in one case, for the most part the progression to use of electronic bundles was seamless.

Future of digital technology

The pandemic will likely result in delays to the Court system for parties and require creative digital solutions on the part of their legal representatives.  However, for the most part, the legal services industry and the Court system are already set up to work remotely.

It remains to be seen whether the use of remote hearing and conferencing facilities will become more widespread when the UK Court system returns to normal. Such facilities are already widely used by the UK and EU Intellectual Property Offices in patent and trade mark hearings.

It was noted by the IPEC judges in all cases, that the use of remote conferencing had been successful. If implemented, remote hearings have the advantage of greatly reduced travel costs for the parties involved in litigation.

[1] HC Trading Malta Ltd v Savannah Cement Ltd [2020] EWHC 2144 (Comm),

[2] “General guidance on PDF bundles” https://www.judiciary.uk/coronavirus-covid-19-advice-and-guidance/

Related posts