Being a party to court proceedings can be a daunting prospect for SMEs, and even for large companies. This is especially true when it comes to IP which is critical to the commercial success of a business. Whether defending, on the attack, or both, IP litigation always takes a few twists and turns before concluding. All of this can be unsettling. However, it does not need to be so.

If a matter is correctly scoped, the right strategy is developed, and priorities are set and adhered to from the beginning, then substantial returns can be achieved, and the benefits of litigation will significantly outweigh the costs.

The best way to obtain a good return on investment from litigation is to keep costs under control by proceeding in a step-wise manner with clear targets at each stage. This can be accomplished by making the right strategic decisions throughout the process, including:

1. FILING IN THE RIGHT COURT

While the Federal Court of Australia (FCA) has always been the main forum for IP cases, the Federal Circuit Court (FCC) has for some time had the capacity to handle Trade Marks, Copyright, Designs and other IP matters.

Importantly, court fees in the FCC may be less than half as much as in the FCA. This can result in savings of more than $15,000 for a three- or four-day trial. Due to the approach of the FCC to pleadings and case management, matters are dealt with expeditiously and consistently.

Furthermore, in recent times the FCC has been bolstered by judicial expertise in IP. Therefore, parties can be confident that IP matters will be conducted in accordance with established court processes, and that consistent and well-reasoned decisions will be made.

If a matter falls outside the scope of the FCC, for example, if it relates to matters under the Patents Act 1990 (Cth), then proceedings will need to be commenced in the FCA. The other strategies discussed below will help your business obtain better results from litigation in both the FCA and the FCC.

2. USING THE RIGHT TEAM

The right mix of legal and commercial experience is needed to ensure you get the desired results. It is also important to streamline the number of advisers to manage costs. For example, where the matter has a technical and/or patent component, using a dual qualified lawyer and patent attorney can prevent doubling up of costs. Where branding is central to the dispute, the right combination of lawyers and trade mark attorneys should be engaged.

As Interface Legal is related to Baxter IP Patent and Trade Mark Attorneys, matters can be run taking advantage of the expertise available in both practices, and this means the team can be smaller and more focussed.

We also have specialists with wide-ranging experience in managing commercial disputes, so we can see different angles to a dispute, and propose solutions which match your business needs.

3. FAST-TRACKING THE MATTER

There is a Fast Track mechanism available in the FCA which permits parties to seek a quicker hearing process, and to use more informal pleadings. Other effective and commercially sensible methods of commencing or expediting a proceeding, modifying pleadings or structuring the timetable leading up to trial, are also open to parties. A Fast Track application should be made early on, otherwise it may be refused.

Due to new practices which the FCC has recently adopted, matters in that court are currently being dealt with very efficiently: within three weeks of filing, parties are allocated a first court date during which the judge can make directions around the filing of material and set the timetable to trial. This means that the entire trial process, potentially including an interlocutory application for injunctive relief, could be managed within as little as six to nine months.

Where it is commercially and strategically appropriate, all means to shorten the timeframe the matter is before the courts should be explored.

4. PREPARE AS IF THE MATTER WILL GO TO TRIAL

Settling is the best way to ensure that a matter is resolved on your terms. It can also provide certainty as to your exposure to costs. However, positioning a matter for settlement requires a commitment to the prospect of running a trial, and making appropriate decisions regarding evidence and legal tactics which maintain pressure on the other side. An opposing party that knows your case is being prepared well for trial is going to be more willing to compromise than one who thinks you are only going through the motions.

SUMMARY

The actions recommended above, amongst others, can transform IP litigation from a costly and uncertain affair into an efficient and focussed process for obtaining a result that adds value to your business.