Promoting transnational dialogue among judiciaries
The annual WIPO Intellectual Property Judges Forum aims to provide a platform for judges from across the globe to exchange their expertise on the most pressing intellectual property (IP) challenges raised by accelerating innovation and the increasingly transnational use of IP.
The 2020 WIPO Intellectual Property Judges Forum was held in a virtual format from November 18 to 20, 2020.
In 2020, the Forum brought together some 300 judges from 89 national and regional jurisdictions, to engage with their global peers on topical issues in copyright, trademarks and patents, as well as issues arising from the influence of technology in judicial case management, and forum shopping in multi-jurisdictional IP disputes.
The Forum will consist of panel discussions with a strong emphasis on dialogue and exchange of information among participants.
Day one – November 18, 2020
Opening (13.00 – 13.10)
Session 1: Patentability Assessment in the Pharmaceutical Sector (13:10 – 14:15)
The fundamental threshold question of patentability in the pharmaceutical sector throws into sharp relief some of the challenging determinations faced by courts in adjudicating patent disputes. Judges are called upon to steer through technically complex subject matter and to answer questions that may have few legal precedents. At the same time, the constellation of policy considerations that surround the research, development and commercialization of, and consumer access to, human therapeutic drugs, raise heightened expectations and scrutiny of judicial adjudication and its significant impacts to society. In some cases, these impacts extend beyond national borders, with some questions the subject of worldwide judicial consideration.
This session will explore how courts have considered the elements of patentability as they apply to the context of pharmaceutical patents, such as: characterisation of a claim as a method of medical treatment (in some jurisdictions rendering the subject matter patent ineligible); and comparative approaches to assessing the patentability of follow-on pharmaceutical innovation (e.g., claims covering incremental changes to existing drugs). The divergences among legal systems will be noted, including different approaches to addressing pharma-specific questions under the rubric of patentability assessment.
Moderator and Speakers
Federal Court of Appeal, Canada : Hospira Healthcare Corporation v. Kennedy Trust for Rheumatology Research, 2020 FCA 30
Supreme Court of India : Novartis AG v. Union of India and Ors. (2013) 6 SCC 1
Delhi High Court, India : Merck Sharp and Dohme Corporation and Anr. v. Glenmark Pharmaceuticals Ltd., CS (OS) No. 586/2013
Delhi High Court, India : Merck Sharp and Dohme Corporation and Anr v. Glenmark Pharmaceuticals Ltd, CS (OS) No. 586/2013
Delhi High Court, India : Astrazeneca AB & Anr v. Intas Pharmaceuticals Ltd, CS(COMM) 410/2020
Court of Milan, Italy : Actavis Group PTC EHF v. Astra Zeneca, Judgment No. 7427/2019
Court of Milan, Italy : Innovet Italia and Epitech v. Pharmasuisse Laboratories
Chamber of Constitutional and Social Law of the Supreme Court, Peru : Hoffmann La Roche AG v. National Institute for the Defense of Competition and Protection of Intellectual Property (INDECOPI), Cassation Number 1112-2011
Court of Justice of the Andean Community : Proceso 33-IP-2013, Gaceta Oficial del Acuerdo de Cartagena No. 2209, 14.68
Enlarged Board of Appeal, European Patent Office : Dosage regime/ABBOTT RESPIRATORY, G0002/08
Session 2: Copyright Exceptions and Limitations in the Context of Information Technology and Digital Products (14:15 – 15:20)
Limitations and exceptions form part of the earliest legal foundations of copyright law, originally conceived in an analog world. The WIPO Internet Treaties make clear, however, that countries have reasonable flexibility to respond to these shifts by extending established limitations and exceptions into the digital space, and by determining new limitations and exceptions, as appropriate. How have courts understood and assessed limitations and exceptions as they arise in the ever-shifting technological landscape that provides such dynamic ground for content creators, users and third parties to engage in new ways of creating and using content, as well as generating revenue, and with such dramatic societal and economic impacts?
In this session, speakers will share recent cases from their jurisdictions as snapshots of the approaches taken by different courts in assessing copyright limitations and exceptions in the digital environment, including: operation of the doctrine of exhaustion in relation to digital copies of works; balancing of interests such as freedom of expression online; and application of existing limitations and exceptions to new technologies and their uses.
Moderator and Speakers
Court of Justice of the European Union : Nederlands Uitgeversverbond and Groep Algemene Uitgevers v Tom Kabinet Internet BV and Others, Case No. C-263/18
Court of Cassation, Morrocco : Case No. 1649-3-1-2019
Supreme Court of Appeal, South Africa : Tellytrack v. Marshalls World Sport (Pty) Ltd and Others  ZASCA 153
Supreme Court of Thailand : InfoQuest v. Bisnews AFE (Thailand) Co Ltd, Case No. 8313/2561
Closing Day 1 (15.20)
Day two – November 19, 2020
Reflections on Day 1: Lead Discussants in Conversation with Session Moderators (13:00 – 13:30)
Session 3: Influence of Technology in Judicial Case Management (13:30 – 14:30)
Amidst the global pandemic, courts around the world are embracing technology in a variety of ways seeking to continue to deliver justice. Online hearings, electronic filings and virtual deliberations, are rapidly becoming the new normal.
With these technological developments, judges are starting to face similar practical issues in the management of IP cases, such as, dealing with samples online, conducting online cross-examination of experts and witnesses, and common legal issues such as ensuring confidentiality, providing appropriate access to the public, and safeguarding the efficiency and quality of justice.
In this session, speakers will share recent technological developments in their respective courts and the implications for the judicial management of IP cases. They will discuss the advantages and disadvantages of virtual formats; whether online hearings require different case management; the specific challenges of access to the public and confidentiality that arise in online hearings; and electronic filing and access to dockets.
Enterprises have been increasingly interested in developing non-conventional or non-traditional marks to identify the source of their products and services in their markets. Sounds, colors, smells, video clips, holograms and three-dimensional marks are amongst the contemporary forms of trademarks that are being submitted for registration in different parts of the world.
Applications for non-traditional marks have given rise to some debate and a number of judicial decisions across the globe. Following Article 6quinquies B(ii) of the Paris Convention and Article 15(1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights, national laws require that marks should be distinctive of the products and services of one trader from those of another. Varying approaches may be taken to the requirements that signs be visually perceptible or that the sign not be exclusively necessary to achieve a technical result. Each of these requirements presents particular challenges for the consideration of the registrability of non-traditional trademarks.
This session, with reference to administrative and judicial decisions from different jurisdictions, will explore how IP offices and courts have dealt with the interesting questions that arise when deciding to approve or deny the registration of non-traditional trademarks.
Moderator and Speakers
Civil and Commercial Court of Asunción, 12° Turno, Paraguay [pending]: Minerías Orienpar S.A. v. Crocs, Inc., Interlocutory order No. 1836 of December 23, 2015
Court of Appeal, Singapore : Société des Produits Nestlé SA and another v. Petra Foods Ltd and another  1 SLR 35
Supreme Court of Appeal, South Africa : Beecham Group PLC and another v. Triomed (Pty) Ltd  4 All SA 193 (SCA)
Supreme Court of Appeal, South Africa : Société des Produits Nestlé SA v. International Foodstuffs  ZASCA 187
Closing Day 2 (15:30)
Day three – November 20, 2020
Reflections on Day 2: Lead Discussants in Conversation with Session Moderators (13:00 – 13:30)
WIPO’s Work in the area of the Judicial Administration of IP (13:30 – 13:40)
Session 5: Forum Shopping in Multi-Jurisdictional IP Disputes: Example of FRAND Disputes (13:40 – 14:50)
Today’s technology products often require compliance with global interoperability standards, such as Wi-Fi, Bluetooth or 3G/4G/5G connectivity. These industry standards are often covered by hundreds or thousands of patents (so called “standard essential patents” (SEP)) that are licensed on fair, reasonable and non-discriminatory (FRAND) license terms.
The global nature and size of the markets for these technology products have resulted in multi-jurisdictional patent litigation that stem from disagreement over the FRAND license rate. While these patent disputes were concentrated in the telecommunications industry, they are also now observed in other industries employing Internet of Things, such as home appliances and automobiles.
Taking the example of the multi-jurisdictional disputes arising in the SEP space, the speakers in this session will examine the availability of global relief when the dispute relates to a global patent portfolio, and the relationship between parallel proceedings in foreign jurisdictions, including the availability of anti-suit injunctions. In these reflections, the speakers will consider the drivers in parties’ choice of jurisdictions and the respective courts’ specificities in addressing the dispute resolution needs in global patent disputes.
Moderator and Speakers
Federal Court of Justice of Germany : Sisvel v. Haier, Case No. KZR 36/17
Higher Regional Court of Munich, Germany : Nokia v. Continental, Case No. 6 U 5042/19
Intellectual Property High Court of Japan : Samsung Elecs. Co. v. Apple Japan LLC, Case No. 2013 (Ra) 10007
Supreme Court of the United Kingdom : Unwired Planet International Ltd & Anor v. Huawei Technologies (UK) Co Ltd & Anor  UKSC 37
U.S. Court of Appeals for the Federal Circuit : Ericsson, Inc. v. D-Link Sys., 773 F.3d 1201
U.S. Court of Appeals for the Federal Circuit : TCL Commc’n Tech. Holdings Ltd. v. Telefonaktiebolaget LM Ericsson, 943 F.3d 1360
U.S. District Court for the Northern District of Illinois : Inre Innovatio IP Ventures, LLCPat. Litig., No. 11 C 9308, 2013 WL 5593609
U.S. District Court for the Western District of Washington : Microsoft Corp. v. Motorola, Inc., 871 F. Supp. 2d 1089