Settlement of UK Intellectual Property Disputes: Part 36 Cpr

What is a Part 36 Offer?owner.
A party to litigation i.e. a civil dispute or aAs there is no innocence defence under UK law
commercial dispute which is before the Courts into intellectual property rights infringement, it
the UK, that party, whether a claimant ormeans that the business is liable for the
defendant may make a Part 36 Offer under theinfringement, and the question moves on to how
Civil Procedure Rules (“CPR”) to applymuch should be paid by way of damages.
pressure to the other party to settle the disputeInformation that the Part 36 Offer Must Contain
early than what otherwise might be the case. AAn effective Part 36 Offer must meet the
Part 36 Offer is made by one a party to settlefollowing requirements:
the litigation before to a hearing and decision by a• It must be in writing.
Judge or decision-maker.• It must be expressed as being made under
Thus, a Part 36 Offer may result in a CourtPart 36.
dispute settling at an earlier stage which often• It must specify the period in which it is open
benefits one or even all parties to the dispute,for acceptance by the other party, which cannot
and provides a tool for the weaker party inbe a period less than 21 days (although it can be
litigation to. They must be in writing anda longer period or even an indefinite period).
structured in the manner prescribed by Part 36 of• It must state that it relates to the entire
the CPR.claim or, if it does not, it must state the relevant
Why Make a Part 36 Offer in the Course ofpart of the claim that it relates to.
Litigation?• It must state whether it takes into account
For parties to litigation, there are various reasonsany counterclaim.
to consider making a Part 36 offer. For example:What Happens if a Part 36 Offer is Accepted by
• A strategic and well structured Part 36 Offerthe Other Party?
may mean that the parties more quickly obtain aA Part 36 Offer may be accepted at any time
satisfactory result in the litigation.before it expires. If you are a Claimant who has
• A Part 36 Offer places pressure on themade a Part 36 Offer and your offer is accepted
other party to the litigation (the party to whomby the Defendant, you will be entitled to have
the offer is made) to seriously consider theyour costs of the litigation paid by the Defendant
strength of their case, whether they areup to the date the Defendant accepted the offer.
prepared to settle, or whether they are preparedUpon acceptance by the Defendant, your claim will
to risk a costs penalty if the matter goes tobe stayed. Where the Defendant has accepted
hearing and they do not ultimately do better thanyour offer to pay you a sum of money, that
the offer put to them. For example, if a Claimantmoney must be paid to you within 14 days of
with a strong claim makes a Part 36 Offer to aacceptance.
Defendant to settle for 85% of the total claim, aCost Consequences: What Happens if a Part 36
pragmatic Defendant may jump at the chance toOffer is Rejected by the Other Party?
settle on this basis in view of the risk that if theIf you are the Claimant and the Defendant does
claim was heard by a Judge an order would benot accept your Part 36 Offer, the Defendant will
made for payment of the full amount of thebe ordered to pay your costs, including interest
claim.on your costs, if your claim proceeds to hearing
• Parties are highly likely to save legal costs inand you do better than your earlier offer. So (for
the longer term through a quicker settlement ofexample), if your claim against the Defendant is
the litigation.for £100,000 and you made an offer to settle
• Exploring settlement prior to hearing canfor £85,000 at an early stage in the litigation
often be advantageous to both parties. At thiswhich the Defendant did not accept, if the matter
stage parties can still negotiate towards agoes to hearing and you are awarded the full
compromise suited to their commercial needs,£100,000, the Court is likely to order the
rather than have an “all or nothing” resultDefendant to pay your costs from the date your
imposed on them by the Judge or decision makeroffer expired up to judgment in your claim.
at a final hearing.If you are the Defendant making a Part 36 Offer
The effectiveness of a Part 36 Offer lies in itsto the Claimant, if the Claimant does not accept
ability to place pressure on the party receiving theyour offer, proceeds to hearing then fails to
offer who will know that, if they do not acceptbetter your offer, the Court is likely to order that
your Part 36 offer and fail to beat your Part 36the Claimant pay your costs of the litigation from
offer at the hearing, the Court is likely to orderthe date your offer expired to the date of
that they make a considerably larger contributionjudgment. In this case the Claimant will be ordered
to your legal costs than they would otherwiseto pay your costs at a higher than usual rate. This
have had to make.type of costs order is known as an indemnity
Intellectual Property Rightscosts order.
Increasingly, it is a sign of the times thatPart 36 Offers may be made prior to the
intellectual property rights owners look tocommencement of legal proceedings or at any
threaten legal proceedings against business thattime prior to the hearing of the dispute. In the
have appropriated photographs, films, or musiccontext of intellectual property rights
and incorporated that material embodyinginfringements, when an offer is made pursuant to
intellectual property rights on their websites.Part 36 of the CPR, if the rights owner does not
Frequently, the business owners themselves areobtain more at the hearing in an Enquiry as to
not aware that they have had infringing materialDamages or an Account of Profits, the IP rights
on their websites, because they placed their trustowner will not be entitled to recover their costs;
in third party contractors to build their site forand in fact, provided there has not been some
them. These third party contractors are knowndisentitling conduct on the part of the Part 36
to misappropriate photographs, images and otherOfferee, they will be entitled to an order to have
material within which IP rights vest. The businesstheir costs paid by the rights owner. Almost
owners frequently only find out about theinvariably the legal costs in a fully belted out
materials that are an infringement of intellectualintellectual property dispute will be well in excess
property rights when a letter before action isof the damages that might be awarded for the
received from the intellectual property rightsinfringement.