What pre-action steps are required or advised before bringing legal action? (For example, is pre-action mediation mandatory in your jurisdiction?)
The Civil Procedure Rules (CPR) sets out what steps parties should take before commencing litigation, including specific pre-action protocols for certain claims (ie, defamation). There is no specific pre-action protocol for technology disputes, but parties should follow the Practice Direction on Pre-Action Conduct and Protocols (PDPAC). At a minimum, parties are expected to write to each other setting out their position and disclosing key documents in a dispute. Parties are also required to consider whether negotiation or some form of alternative dispute resolution may assist in avoiding litigation.
All pre-action requirements should be interpreted in the context of what is referred to as the overriding objective, the aim of which is to deal with cases justly and includes: minimising unnecessary expenditure and ensuring that cases are dealt with fairly, expeditiously and proportionately.
The main consequences for non-compliance are potential adverse costs awards and the proceedings being stayed until the parties follow the pre-action protocol. Compliance with a pre-action protocol is not required where pre-action correspondence would defeat the purpose of the proceedings.
Does your jurisdiction have a specialist court or other arrangements to hear technology disputes? Are there specialist judges for technology cases?
The Technology and Construction Court (TCC) in London is a specialist division of the Business and Property Courts that typically conducts the hearing of technology disputes. A claim in the TCC is assigned to a particular judge, who will, in general, manage all the procedural directions and will eventually try the case, unless it is resolved beforehand.
Certain disputes relating to intellectual property rights must be brought in the Patents Court (for claims over £500,000), the Intellectual Property Enterprise Court (IPEC) (typically for claims under £500,000), or the Intellectual Property List of the Chancery Division.
What procedural rules tend to apply to technology disputes?
For intellectual property disputes, the standard CPRs are modified by CPR 63, supplemented by Practice Direction 63. There is also an Intellectual Property Enterprise Court Guide; a Patents Court Guide and a Chancery Guide.
What rules and standard practices govern the collection and submission of evidence in your jurisdiction (eg, discovery/disclosure obligations or obligations to preserve relevant documents)?
A potential litigant (and its solicitors) is obliged to prevent potentially relevant documents from being altered, deleted or destroyed, whether accidentally, deliberately or routinely, by that party, its employees and affiliates and third parties. Solicitors are under a duty to inform their clients of the obligation to preserve potentially relevant documents as soon as litigation is contemplated. There are many sanctions that may be imposed on a litigant who destroys relevant documents once litigation is in reasonable contemplation, including being found in contempt of court or a costs award being made against them.
Disclosure obligations will be set out in directions by the court. However, for claims in the Business and Property Courts, a disclosure pilot scheme currently applies. This is set out in Practice Direction 51U. Under the pilot scheme, parties are generally required to provide Initial Disclosure of key documents (although there are various exceptions). The court may then order Extended Disclosure on identified issues. The order must be reasonable and proportionate, and there are various ‘disclosure models’ that can be adopted by the Court, ranging from disclosure of known adverse documents to a wide search-based disclosure. The disclosure pilot scheme will become permanent on 1 October 2022 and be renumbered as Practice Direction 57AD.
What evidence is protected by privilege in your jurisdiction? Do any special issues surrounding privilege arise in relation to technology disputes?
There are two main types of legal professional privilege that may apply to protect some evidence: legal advice privilege and litigation privilege. Legal advice privilege protects (written or oral) confidential communications between a lawyer and a client for the dominant purpose of giving or receiving legal advice. Whether something constitutes legal advice depends on whether the advice includes what should prudently and sensibly be done in the relevant legal context. ‘Client’ is construed narrowly and only covers individuals who are charged with seeking and receiving legal advice. It does not cover all employees within a company. Importantly, communications with employees for the purposes of obtaining factual information to inform the giving or receiving of legal advice may not be covered by legal advice privilege.
Litigation privilege is broader than legal advice privilege and protects confidential, written or oral communications between a client and its lawyers, or either of them and a third party, or other documents created by or on behalf of the client or his lawyer, where the dominant purpose of the communication is the giving, seeking or receiving of legal advice in connection with proceedings, or collecting evidence for use in those proceedings. This privilege only arises when proceedings are reasonably contemplated.
Other potential grounds for privilege include joint privilege, where more than one party retains the same solicitor to advise them (and so have a joint retainer) or where they have a joint interest in the subject matter of a privileged communication, and common interest privilege which enables the sharing of privileged documents with others with the same interest (unlike joint interest, the right to waive privilege is exclusively that of the party who originally enjoyed the privilege).
In relation to technology disputes, particular issues can arise where a crisis situation has occurred, and technical responses and investigations are being carried out as a matter of urgency. Legal advice should be sought at an early stage regarding how privilege protections could be maximised for those investigations, to avoid the creation of potentially problematic material that would have to be disclosed in any later dispute.
Protection of confidential information
How else can confidential information be protected during litigation in your jurisdiction?
Documents filed during litigation form part of the court record and can generally be inspected by non-parties. However, it is possible to apply under CPR 5.4C to prevent or restrict access to a statement of case in order to protect information that is considered to be confidential or commercially sensitive.
Confidentiality ‘Clubs’ can also be used, particularly in patent and trade secret cases. The precise terms of these vary, but essentially they restrict who can see certain information or documents and can extend to controlling how such information is shared. Other potential options include private hearings (although courts will only agree to this if strictly necessary), and seeking an order under CPR 31.22(2) restricting or prohibiting the use of a document which has been disclosed, even where the document has been read to or by the court, or referred to, at a hearing which has been held in public.
Can expert witnesses be used in your jurisdiction? If so, how are they appointed and what is their role in the proceedings?
The court will only allow expert evidence if it is satisfied that the case involves matters on which it does not have the requisite technical or specialist knowledge. Expert witnesses often play a critical role in complex technology disputes. Typically, where expert evidence is permitted, each party will appoint and instruct an expert to give evidence. The instructions to the expert are usually disclosable to the other party.
The experts prepare written reports, which are normally exchanged simultaneously. It is common for the experts to meet and produce a joint report setting out the areas where they agree and disagree (with a summary of reasons for disagreement). Experts may also give oral evidence and be cross-examined. This is common in complex technology disputes.
The expert’s duty is owed to the court, not to the party instructing it and paying its fees. It is usual, therefore, for parties to instruct an expert on an advisory basis first (to obtain a preliminary indication of their thinking) before formally instructing them as an expert.
Sometimes, joint expert evidence is ordered, and the TCC guide encourages the use of a single joint expert. However, in practice, this is unusual.
What is the typical time frame for litigation proceedings involving technology disputes?
It is rare for complex technology disputes to last less than 12 months. Typically they last between 12 months and two years (and sometimes longer).