IP Insurance and other IP litigation funding arrangements

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1 IP Insurance and other IP litigation funding arrangements Introduction There are a number of different insurance options for insuring your intellectual property against the cost of enforcement, pursuing or defending claims for infringement, validity or ownership, loss of protection or finding of infringement, or fighting contractual claims with third parties affected by such events. In addition there are now some litigation funding options which may provide an alternative approach especially for those needing cash flow support to conduct the proceedings or to deal with applications for security for costs. A. Before the event insurance As the name suggests this covers the possibility of costs arising from claims arising whose existence or threat are not yet known about at the time the policy is taken out. Many IP insurance policies applicable to individual rights are of this type. Sometimes, it may be combined with other funding options such as a conditional fee agreements, or after the event insurance where a dispute arises, with different insurances sharing the risk. Some of the off-the-peg policies have fairly limited, basic, cover with limited pre contract disclosure: but the more, bespoke, higher indemnity polices may be much more expensive. Because such policies are inherently often bespoke the categories discussed below are merely fairly generalised. They have in common that they will exclude cover for a known dispute or risk and indeed if the known dispute alleges invalidity that may preclude any cover being accepted to protect against the consequences of an invalidity claim by anyone Commercial insurance/general litigation insurance Most general commercial insurance policies have only very limited cover, if at all, for IP matters. Each individual policy will need to be looked at to see what is covered under the insurance policy. Director indemnity policies also frequently exclude liability of directors for IP infringement claims. Specific IP oriented policies may cover one or more or any combination of Defence costs / defence and damages cover only for infringement actions Pursuit/enforcement costs cover Cover for revocation and invalidity actions Opinion only cover This could include covering the wasted costs of acquisition of the IP rights such as prosecution fees if they are subsequently lost. The policy can cover specific IP rights or whole portfolios, in limited territories or globally, but US/Canadian cover will usually involve significant additional premiums because of the expensive litigation environment in those countries. Some policies may offer cover limited to, say, the Intellectual Property Enterprise Court (IPEC), which may present difficulties if an application is subsequently made to transfer a case to the Patents Court. Another approach, which some insurers are taking, is to offer a lower indemnity policy (which keeps the premium costs down) which can be used in any court of first instance. They take the view this mitigates the transfer risk and allows the insured to instigate action in the Patents Court too. This would not necessarily go far in the higher court but the other party will not know the extent of cover (or even the existence of cover) and it may provide a fund to argue for transfer down to the IPEC or some leverage to bring parties to the table Various types of supplementary cover can sometimes be obtained to deal with post litigation consequences, for example 1

2 Product recall costs or redesign/rebranding costs Reputational harm mitigation costs However there does not seem to be a policy to cover general IP portfolio impairment, e.g. loss of value of the portfolio as a result of one or more of its patents being held invalid. Some policies may provide first party loss in the form of revenue stream interruption or reduction of royalties. Apart from general IP insurance or specific IP rights insurance you may also encounter a need for: Transactional and licence agreement insurance/litigation buy out insurance This provides insurance to cover claims on specific contractual representations and warranties given by a party in respect of the validity or non-infringement undertakings applying to IP Rights, or indemnities payable to licensees or customers who have been unable to sell products because of the finding of infringement. Cover can also be obtained for costs incurred in enforcing or defending breaches of a licence or other agreement controlling the exploitation of IP or the costs of litigation anticipated at the time of a transaction, the premium for which may be factored into the contract price. It may also be useful for a SME supplying a large retailer or for a vendor selling a business with IP based assets. Individual director Insurance On occasion there may be a call to join a director as a co-defendant to proceedings in his or her individual capacity where it is alleged that he is personally liable or that the corporate veil should be lifted because of his control over the defendant company. Specific cover is available to insure the risk of costs and damages associated with such a claim. Again general policies may not include cover for this type of claim. B. After the Event insurance This type of insurance covers the costs of litigation where insurance is taken out only after a specific legal dispute has come into being or its threat is known of. It covers the policyholder s risk of ultimately losing the case, in respect of his own and the claimant s costs, but will not fund the costs as the case proceeds. The policy can cover the policyholder as a claimant or as a defendant. As such there are fairly complicated options in premium payments ranging from up front premiums (for example when defending a claim) to premiums deferred until the end of the case (for example where the policyholder is the claimant seeking damages) or a combination of these or even a percentage of the damages finally recovered. As in all insurance, there may be an excess on the policy with the insured paying the first tranche of costs up to a limit. The indemnity may be capped at a limit. More limited cover may be available. For instance, given the high cost of litigation, some parties (especially if they do not have attachable assets in the jurisdiction) may be exposed to applications for security for costs which may be a challenge in terms of short term cash flow or borrowing capacity. It may be possible to obtain insurance to cover this exposure, though the courts may not accept such insurance policies as a substitute for the security if they are not worded in sufficiently unconditional terms. As an alternative, the insurer may itself provide some bond to cover the security. C. Litigation funding agreements These are not insurance policies but can work in a similar way for claimants and may have the advantage of providing the necessary cash-flow to fund the case, rather than only paying out at the end, as well as avoiding up front premiums. However they can be very expensive options. Some providers seek assurances from claimant s lawyers of a certain percentage prospect of success and as to the minimum likely multiple of damages over costs to be incurred which can be daunting. Under these agreements an investor funds the legal costs of an action in exchange for a share of any proceeds, often the costs expended plus a win/settlement bonus. These costs or the share of the 2

3 proceeds may be capped. If the case is lost the investor picks up the full costs of the case. The share may vary according to the type of case and the upfront assessment of the risk. Such funding arrangements are not now regulated in England & Wales. The Association of Litigation Funders of England & Wales was created in consultation between the Civil Justice Committee and a group of funders, to provide a form of self-regulation for its members. D. Success fees/contingency fees A conditional fee arrangement (CFA) is an agreement between a client and his legal advisors that some or all of the fees normally payable for provision of legal services will only be owed in certain circumstances, usually linked to a successful outcome in a piece of litigation. The Jackson reforms, which included an overhaul of the rules surrounding CFAs, came into force in April The reforms, for the most part, liberalised of the use of CFAs in civil litigation. One notable exception is that fees payable in excess of what would have been due had the CFA not been entered into, so-call success fees, are no longer recoverable from the opposing party. In other words, a victorious party with a CFA may only recover costs from the losing party up to the level that he would have paid his legal advisors had they not agreed to the CFA. What about litigation overseas e.g. the USA? As mentioned above, global cover is available from UK brokers. There are also US based brokers and underwriters willing to offer cover to UK clients for the USA and non-us jurisdictions. These policies may be different in scope and providers may not be regulated by the FCA but for a US focussed business such as in software, clearly the size of the market, the very different level of costs in the US and the very different arrangements on awards of costs and damages as well as conditional and success fee arrangements give rise to significant issues for parties with IP or business activity in the USA. How much does insurance cost? Obviously this varies with risk and policy. Publicity statements include: Our minimum premiums on transactional business are 10,000, 12,500 or $15,000. Premiums start from as little as 2,000 Premiums start from as low as 100 per month The standard premium is 899 plus Insurance Premium Tax, and that is for all design rights in a Member s portfolio that are UK registered, or lodged in the ACID Design Databank The Opinion Only cover will generally cost clients only a few hundred pounds, as it is designed to be an option for new start-up clients. The IP Legal Expenses Cover for Pursuit/Enforcement and/or Defence Costs will be typically a few thousand pounds upwards. IPEC only pursuit cover will be more affordable, whilst still offering protection in this court to enforce your rights and protect your business, and premiums start below a 1,000 for one IP right. Limits of indemnity, excesses and premiums: 1. Limits of indemnity up to 10,000, Excesses available from as low as 5, Premium for basic levels of cover can start from as low as 2,000 3

4 The Comprehensive IP Package, which includes awards for damages as well, will generally start at 10,000 upwards. It is not always clear whether these fees include insurance premium tax. This question should always be asked. What level of cover can I get? Typical levels of cover might be anything from 100k be up to 10m, depending on premium and policy and excess. How quickly can I get insurance cover? s and underwriters will want to assess the risks before granting binding cover. Significant preinsurance due diligence may be required. Some brokers claim to offer quotes within 48 hours, others may give within a week to 10 days. At the other extreme some will require detailed information which will be used in conjunction with underwriters own IP analytics software to assess risk after which indications may be given. How many policy claims are backed/turned down by the underwriters? This is a frequently asked question. What do the UK brokers say? [There are] no statistics at all I'm afraid. No one really has any idea how many policies have even been written in the UK. I estimate less than 200 so it's a very small sample.. Lack of awareness, misconception about cost and not enough IP brokers are the key reasons for low number. I work closely with the insurers and in my view, their aim is to grow the market. They know if the reputation is that they don't pay out, the market will die pretty quickly. So whilst there is no empirical evidence, I am confident qualifying claims will be met. Part of my job is to ensure this happens. In my experience, the hard part is getting the enquiries in. Once in, the conversion rate is high. Sure, it s not for every business but for a very large section of SMEs it is affordable. Price has fallen considerably. Yes historically (going back pre 2000) the underwriters had a poor reputation in this class of business. There were quite a few disreputable markets about (mostly gone) and cover was you got what you paid for. That has now all changed and the Underwriters have very sophisticated policy forms fit for purpose and are very professional. The use of a good, knowledgeable broker in the sector (there are not many) to assist if a contentious claims issue of course always helps! In my experience over last 15 years we have ensured 90% of all claims (both defence and pursuit) have been dealt with by underwriters. Those not have been due to non-disclosure or false information provided by the insured. I am sure you will appreciate there can be a high moral hazard (regarding say known circumstances) with customers requiring this coverage. What impact will insurance or other arrangements have on IP litigation? Disclosure of the litigation funding There is no general requirement for disclosure of the details of an insurance policy. The general position is that the insurer stands behind the defendant rather than alongside or in front meaning the claimant has no right of action against the insurer. In West London Pipeline and Storage Ltd and Anor v Total UK Ltd and Ors [2008] EWHC 1296 (Comm) the Defendants made an application for disclosure of the insurance arrangements of a third 4

5 party who were said to be join tortfeasors and from whom a contribution would be sought. Steel J held that the court had no jurisdiction to require disclosure of the insurance documents as they could not be said to be relevant to a matter which is in dispute in the proceedings, a requirement of CPR Part 18. Furthermore, since April 2013 there is no requirement for disclosure of an after the event (ATE) policy to either the court or to other parties. Control of the litigation and settlement ATE insurers do not generally insist on receiving regular updates or reports. However, they will want to be informed (and will have inserted terms into the policy to this effect) of the following: A material change in the merits of the case: if these go down then they will want to discuss with the solicitors whether the case should continue or not. Key developments in the case (for example, case management conferences) and, in particular, anything that impacts on costs (for example, interim applications). Settlement negotiations: pre-jackson, insurers' approval was usually required before any settlement could be agreed. Where global settlements were agreed insurers wanted to ensure that they received their cut. However, after the Jackson reforms, where the client is responsible for payment of the premium, the insurers' interest in any settlement will only be to the extent of protecting their exposure to any costs liability, unless they stand to receive a portion of the proceeds as part of the premium payment. Generally, they will want to approve any settlement which results in their incurring a liability to pay the other side's costs under the insurance policy. Recovery of insurance premiums as costs in the event of success While previously recoverability of insurance premiums was explicitly allowed under s.29 Access to Justice Act 1999, this practice was ended in April 2013 and premiums for policies taken out after this date are not recoverable. Where can I get advice? It will be sensible to shop around for cover in a market where costs, especially for bespoke policies are very variable and risk appetite may vary enormously. Generally insurance of this type is arranged through brokers rather than going direct to underwriters. s and underwriters active in this area are regulated by the Financial Conduct Authority and advice should only be taken from such regulated persons. Patent and trade mark attorneys should not receive referral fees for directing clients to specific brokers or underwriters and are not insured to give advice in these matters. Many providers advertise on the internet and may be found by a simple keyword search. Some brokers, intermediaries and underwriters known to the author to be active in the UK advising on this type of insurance include 5

6 s ADF Insurance s Ltd Website: Tel No: Summary of services/products as provided by the supplier Opinion Only Policy; IP Legal Expenses Cover (for both Pursuit and Defence); Comprehensive IP Package Solution (for both Pursuit and Defence costs, and Damages Awards). Aon Risk Solutions Helen Fink Direct Line + 44(0) helen.c.fink@aon.co.uk Michael Parrant Direct Line + 44(0) michael.j.parrant@aon.co.uk Aon provides insurance broker and risk management services to businesses. The products and services are built around the clients' needs and provided by professionals with extensive expertise in both their industries and local markets. The client-focused approach leverages a global network of resources, industryleading data and analytics and specialised expertise. Inventive Step Consultancy Ltd Website: Tel No: Intermediary The product is available for the company s IP including patents, trademarks, copyright and trade secrets. The policy covers damages or settlement awards. The policy also provides cover for counterclaims, product recall and other loss mitigating measures (product underwritten by CFC Underwriting Ltd.) La Playa Website: Contact: Elaine Lamb elaine.lamb@laplayainsurance.com Tel No: La Playa's PatentEnforcer is a cost effective insurance solution designed specifically for Small & Medium Enterprises (SMEs) to fund the substantial costs involved when enforcing their patent rights when they are being infringed. Intermediary 6

7 Miller Insurance Services LLP Website: Tel No: Miller can source insurance policies to protect IP owners and users from litigation costs, infringement liabilities and revenue loss related to their IP rights. Asset Protection: IP asset protection insurance compliments the cover provided by litigation policies, but focuses on the revenue streams generated by IP rights. SafeGuard IP Website: David Bloom Tel No: Safeguard ip can advise on insuring all risks associated with intellectual property including: The legal costs of enforcement and defence actions; Damages; Exposures under warranties and indemnities; and Lost profits following revocation of rights. Policies are available for businesses of all sizes from micro to multinationals. Sybaris Legal & IP Website: Ian Wishart - iwishart@cobralm.com Tel No: The Abbey Legal/Sybaris Legal and IP Opinion Only Policy; The Cigna/Sybaris Legal & IP Key Markets Protection IPEC Policy; and The QBE Europe/Sybaris Legal and IP Pursuit and Defence Policy. The Judge James Blick Tel No info@thejudge.co.uk We arrange bespoke litigation finance and ATE insurance for commercial disputes based solely on the client s specific requirements. ATE insurance broking and litigation funding 7

8 Willis Limited Website: Contact: Howard Phillips Tel No: Willis arrange insurance policies for all types of Intellectual Property Rights: Trade Marks Registered Designs Patents Copyright Our clients range from small businesses to large corporations located across the world including pharmaceutical companies, technology companies, telecom organisations and companies involved in engineering and the oil and gas industry Insurers and underwriters Summary of services/products as provided by the supplier Abbey Legal Protection Website: Before the Event Intellectual Property Legal Expenses Insurance Tel No: +44 (0) After the Event Intellectual Property Legal Expenses Insurance Tel No: Insurance Intermediary IP Insurance Product info: Policy is designed to pay the legal expenses of businesses that are in dispute about the ownership or infringement of their own registered Intellectual Property rights. The policy is intended for small to medium sized businesses with patents, and/or trademarks and/or registered designs. It will enable them to pursue infringers or defend invalidity actions about their own Intellectual Property. CFC Underwriting Ltd Website: IP blog: IP Inbox: Office phone: Underwriters: Erik Alsegard, IP Practice Leader Maddi Brown, IP Underwriter Carys Rumney, IP Underwriter Matthew Muggeridge, IP Underwriter Underwriting Managing General Agency IP Insurance Product info: CFC s standard IP insurance product, backed by Lloyd s of London, targets SMEs across most sectors and offers worldwide cover for the defence and pursuit of infringement actions for all IP. It includes the legal costs of defending or pursuing a claim as well as damages or settlement awards. It includes cover for any contractual indemnities to third parties, directors and officers cover, some cover for IPrelated breach of contracts and employee disputes and cover for loss of profit or loss of IP rights as a consequence of IP infringement disputes. 8

9 Liberty Specialty Markets Website: Underwriting Contact: Matthew Hogg Tel No: +44 (0) Underwriting Agent IP Infringement Insurance (modular policy) - Intellectual Property Defence, Intellectual Property Contractual Liability, Contractual Intellectual Property Disputes, D&O Intellectual Property Liability; Intellectual Property Value Insurance (1st Party IP cover). OPUS Underwriting Limited Website: Tel No: Underwriting Agent OPUS Sentry - aimed at all businesses, this product provides Infringement Liability cover. OPUS Sabre - aimed at all businesses, this product provides Infringement Assertion cover. OPUS Value - aimed at all businesses, this product provides Revenue Protection cover. QBE European Operations Website: Tel No: Insurer QBE Sybaris Legal and IP Policy - developed in conjunction with Sybaris insurance brokers - covers defence and pursuit costs for IP, including patents, trademarks, copyright and registered deigns. Damages can be considered on referral. QBE Professional Indemnity policies for Technology and Media companies - cover for claims made against our insureds by third parties losses arising out of IP in the course of the Insured's ordinary business practices. 9

10 Tokio Marine Kiln Website: 20 Fenchurch Street, London EC3M 3BY T: +44 (0) Ian Lewis Tel: +44 (0) Insurer Our intellectual property insurance is designed to protect an enterprise from the financial consequences of business interruption following an adverse court order, or an out of court settlement, and in particular: o o o Loss of profit from the inability to sell products or license IP Extra costs and expenses to work around to avoid a loss of net profit or licensing fees Various contractual liabilities relating to business interruption We have a focus on an expanding range of assureds including, but not limited to, banks, pharmaceuticals, software companies, and technology companies. Our maximum line size is USD25m./GBP15m In addition some associations have arranged group schemes including ACID IP INSURED Website: Contact: info@acid.uk.com Tel No: ACID IP Insured for ACID Members works in conjunction with the ACID Design Databank. Provides the means to enforce design rights through the Intellectual Property Enterprise Court in the English and Welsh Courts. The limit of indemnity is 100,000 for any one claim, and in total per annum (The standard premium is only 899 plus Insurance Premium Tax). This list does not form any endorsement or recommendation. The absence of a name from this list equally does not imply any lack of competence or endorsement. Acknowledgement is due to the companies listed above for their assistance in compiling this information. 10