Claim Form Issuing Fees

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IP Infringement Claim Form – the issuing fee and the certificate of value

The normal claim form in an IP infringement case will not include a sum to be recovered (as in a debt claim) or a figure for damages.  It will simply claim an enquiry into damages or, at the option of the claimant, an account of profits.  The fee payable on the commencement of proceedings has a sliding scale - £400 for a claim to recover a sum of money where the sum claimed does not exceed £50,000, rising to £1,700 where the sum claimed exceeds £300,000.

The fee calculation is related to the Certificate of Value that must be included in all Claim Forms.  CPR 16.2 (1) (c) provides that a Claim Form must, where the claimant is making a money claim (and note that this includes a claim for damages) contain a statement of value.  CPR 16.3 (2) expands on this: it spells out what the statement or certificate of value should say –

“The claimant must, in the claim form, state-

(a)     the amount of money he is claiming:

(b)     that he expects to recover-

(i)                   not more than £5,000;

(ii)                 more than £5,000; or

(iii)                more than £15,000; or

(c)     that he cannot say how much he expects to recover.”

One purpose of the certificate of value is to assist in allocating the case to the small claims track (for cases covered by (b)(i)), the fast track ((b)(ii)) or the multi track ((b)(iii)), an issue that does not arise in IP infringement cases.

The second purpose of the certificate of value is to require the practitioner to self certify the fee to be paid.  Practitioners have tended to adopt one of the following alternatives:

1. Endorse the Claim Form with the statement “The Claimant expects to recover in excess of £15,000” and pay the £400 fee. The reality is that the practitioner does not know how much his client stands to recover.  The purpose of commencing proceedings may be to prevent an infringing product going on the market at all.  So the damages may be zero, if an interim injunction is obtained promptly, but a very large sum if the defendant is permitted to continue trading up to the end of trial.  But, it is said by those who advocate this route, that it made it clear to the issuing clerk that the case was a multi track one and made practical sense in circumstances where the client did not know how much was really at stake.

2. Pay the £1,700 fee (with the same certificate of value).  The argument for this is that the “sum claimed….exceeds £300,000 or [is] not limited” (to quote, with my emphasis added, from the not very grammatical Civil Proceedings Fees Order).

Opinions on which is better are divided so I popped into the fees office while I was in the High Court a few days ago and discussed the issue with the chap in charge there.   And the answer, when I explained the position about liability and quantum being separated in IP cases, was unequivocal.  The Claim Form must be treated as one for which the sum claimed is “not limited”.   So the full £1,700 fee must be paid. Plus of course an additional £400 in respect of the other, non-financial, relief that will be claimed.

It was not until I was on the tube later that I realised that I should have asked whether the fee could be reduced by setting out the prayer for relief as “an enquiry into damages or at the Claimant’s option an account of profit with the total claimed in either case being not more than £X”.  It seems totally logical that if the figure for X was £50,000 the fee should be reduced to £400.   And it might just be worth making that saving for the client in circumstances where one is issuing a claim in order to obtain an injunction against an impecunious nuisance infringer against whom a money judgment would be worthless.   But which one of us would want to take the risk of the spiv infringer operating out of a Transit van at a car boot sale not winning the lottery or turning out to be the son of a Rolling Stone?

Chris Ryan

April 2006

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