2021 WIPO Intellectual Property Judges Forum

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.

Past Editions

The 2021 WIPO Intellectual Property Judges Forum was held in a virtual format from November 10 to 12, 2021.

In 2021, the Forum brought together 360 judges from 94 national and regional jurisdictions to engage with their global peers around the special theme of judicial patent case management. The topics covered issues such as distinctive judicial case management, challenges for patent disputes, patent invalidity and infringement proceedings, and unique issues in biologic and pharmaceutical patent disputes. The discussions also addressed case management issues of relevance to IP disputes more broadly, such as the role of experts, and damages.

The WIPO Intellectual Property Judges Forum is an annual event organized by the WIPO Judicial Institute as part of the Organization’s work with the judiciaries.

Virtual meeting

Message from Justice Annabelle Bennett, Chair, WIPO Advisory Board of Judges

Program and speaker profiles
List of participants
Report

Other editions of the Forum

Program (Virtual)

Day one – November 10, 2021

Opening (13.00 - 13.15)

Daren Tang
Director General, World Intellectual Property Organization (WIPO)

Annabelle Bennett
Former Judge, Federal Court of Australia, Sydney, Australia; Chair of the WIPO Advisory Board of Judges

Master of Ceremonies:
Nahal Zebarjadi
Legal Officer, WIPO Judicial Institute

Session 1: Judicial Patent Case Management (13.15 – 13.40)

Overview of judicial structures, decision-makers and processes for patent disputes
Judicial education for patent disputes:
- How judges can be proactive in managing their cases
- Value of formal and informal education

Speakers:

Jeremy Fogel
Executive Director, Berkeley Judicial Institute; Former Director, Federal Judicial Center, United States of America

Peter S. Menell
Professor, Berkeley School of Law; Faculty Director, Berkeley Judicial Institute, United States of America

Min Eun-Joo
Director, WIPO Judicial Institute

Session 2: Distinctive Judicial Case Management Challenges for Patent Disputes (13.40 – 14.30)

What are the common challenges faced by judges in managing patent disputes? (e.g. scope of discovery, scope of dispute, separation of issues going to trial, technical fact finding)
What are some of the practices aimed at achieving greater speed, efficiency and consistency in the judicial adjudication of patent disputes, during the pre-trial, trial and post-trial phases?
Benefits of specific case management tools implemented, and impediments to their use

Moderator and Speakers:

Moderator:
Kent Jordan
Judge, U.S. Court of Appeals for the Third Circuit, Philadelphia, United States of America

Stephen Burley
Justice, Federal Court of Australia, Sydney, Australia

He Juan
Senior Judge, IP Court of the Supreme People’s Court, Beijing, China

Eduardo Azuma Nishi
Judge, São Paulo Court of Justice, São Paulo, Brazil

David Unterhalter
Acting Justice, Supreme Court of Appeal, Bloemfontein, South Africa

Session 3: Decision Makers and the Role of Experts in Patent Disputes (14.30 – 15.25)

How do judges use experts in patent cases?
How does the judge become familiar with patent law and with the specific technology being litigated?
How does the judge make a finding between disagreeing experts, and then explain the finding when delivering her or his reasons?
Is patent claim interpretation a question of law or a question of fact? Is inventive step/obviousness a question of law or a question of fact? What is the role of the judge/jury, what is the role of experts in the decision-making with regard to these questions?

Moderator and Speakers:

Moderator:
Klaus Grabinski
Judge, Federal Court of Justice, Karlsruhe, Germany

Lee Kyuhong
Presiding Judge, Patent Court, Daejeon, Republic of Korea

Kathleen M. O’Malley
Judge, U.S. Court of Appeals for the Federal Circuit, Washington D.C., United States of America

Valerie Thean
Justice, High Court, Supreme Court, Singapore

Closing Day 1 (15.25 – 15.30)

Day two – November 11, 2021

Reflections on Day 1: Lead Discussants in Conversation with Session Moderators (13.00 - 13.20)

Moderators and Speakers:

Session 2 Moderator:
Kent Jordan
Judge, U.S. Court of Appeals for the Third Circuit, Philadelphia, United States of America

Session 2 Lead Discussant:
Tamar Avrahami
Judge, District Court, Tel Aviv, Israel

Session 3 Moderator:
Klaus Grabinski
Judge, Federal Court of Justice, Karlsruhe, Germany

Session 3 Lead Discussant:
Angela Furlanetto
Justice, Federal Court, Ottawa, Canada

WIPO’s Work in the area of the Judicial Administration of IP (13.20 - 13.35)

Min Eun-Joo
Director, WIPO Judicial Institute

Session 4: Patent Invalidity / Nullification Proceedings (13.35 - 14.30)

When and where in the process does the question of patent invalidity get addressed?
Time limit to invalidity challenges
Claim construction (administrative and judicial review)
Consideration of unpredictable results of an invention
Evidentiary weight of technical reports in nullification proceedings

Moderator and Speakers:

Moderator:
Jeremy Fogel
Executive Director, Berkeley Judicial Institute; Former Director, Federal Judicial Center, United States of America

Asai Ken
Judge, Intellectual Property High Court, Tokyo, Japan

Hugo R. Gómez Apac
Judge, Court of Justice of the Andean Community, Quito, Ecuador

Charlotte May
Deputy Judge, High Court of England and Wales, London, United Kingdom

Session 5: Patent Infringement Proceedings (14.30 - 15.25)

Patent infringement by equivalent means
Direct and indirect patent infringement
Establishing the facts of the alleged infringement

Moderator and Speakers:

Moderator:
Colin Birss
Lord Justice of Appeal, Court of Appeal of England and Wales, London, United Kingdom

Lyudmila Novoselova
President, Intellectual Property Court, Moscow, Russian Federation

Prathiba Singh
Justice, Delhi High Court, New Delhi, India

Peter Tochtermann
Presiding Judge, Patent Chamber, Regional Court, Mannheim, Germany

Closing Day 2 (15.25 – 15.30)

Day three – November 12, 2021

Reflections on Day 2: Lead Discussants in Conversation with Session Moderators (13.00 - 13.20)

Moderators and Speakers:

Session 4 Moderator:
Jeremy Fogel
Executive Director, Berkeley Judicial Institute; Former Director, Federal Judicial Center, United States of America

Session 4 Lead Discussant:
Rian Kalden
Senior Judge, Court of Appeal, The Hague, Netherlands

Session 5 Moderator:
Colin Birss
Lord Justice of Appeal, Court of Appeal of England and Wales, London, United Kingdom

Session 5 Lead Discussant:
Carine Gillet
First Vice President, Judicial Tribunal, Lille, France

Session 6: Unique Issues in Biologic and Pharmaceutical Patent Disputes (13.20 – 14.00)

How are modern biologic and pharmaceutical patents being treated in today’s world?
- How does a second medical use work within the confines of patentability and infringement?
- What is the role of post-publication data and plausibility arguments?

Moderator and Speakers:

Moderator:
Annabelle Bennett
Former Judge, Federal Court of Australia, Sydney, Australia; Chair of the WIPO Advisory Board of Judges

Du Weike
Senior Judge, IPR Division, Supreme People’s Court, Beijing, China

Roberto Romandini
Legal Member, Boards of Appeal of the European Patent Office, European Patent Organization, Munich, Germany

Session 7: Damages (14.00 – 14.40)

Principles and challenges of damage calculation
Compensation or punishment?
Evidentiary basis for establishing damages

Moderator and Speakers:

Moderator:
Prathiba Singh
Justice, Delhi High Court, New Delhi, India

Samuel Granata
Judge, Court of Appeal, Antwerp, Belgium; Benelux Court of Justice, Luxembourg

Kim Kwangnam
Judge, District Court, Daegu, Republic of Korea

Roundtable: Future of Judicial Patent Case Management (14.40 – 15.20)

Technology and case management (remote case management)
Alternative dispute resolution (ADR): How actively may a judge push parties to mediate?
How can case management help to make patent litigation more cost-effective, in particular for SMEs?

Moderator and Speakers:

Moderator:
Kathleen M. O'Malley
Judge, U.S. Court of Appeals for the Federal Circuit, Washington D.C., United States of America

Annabelle Bennett
Former Judge, Federal Court of Australia, Sydney, Australia; Chair of the WIPO Advisory Board of Judges

Colin Birss
Lord Justice of Appeal, Court of Appeal of England and Wales, London, United Kingdom

Jeremy Fogel
Executive Director, Berkeley Judicial Institute; Former Director, Federal Judicial Center, United States of America

Klaus Grabinski
Judge, Federal Court of Justice, Karlsruhe, Germany

Kent Jordan
Judge, U.S. Court of Appeals for the Third Circuit, Philadelphia, United States of America

Prathiba Singh
Justice, Delhi High Court, New Delhi, India

Closing (15.20 – 15.30)

Annabelle Bennett
Former Judge, Federal Court of Australia, Sydney, Australia; Chair of the WIPO Advisory Board of Judges

Marco Alemán
Assistant Director General, IP and Innovation Ecosystems Sector, WIPO

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