An International Guide to
Patent Case Management for Judges

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Foreword by Berkeley Judicial Institute

Since 2018, the World Intellectual Property Organization (WIPO) has convened leading jurists representing more than eighty countries to discuss trends and developments in the law resulting from the increasingly global reach of innovation. WIPO’s annual IP Judges Forum has provided invaluable opportunities both for the exchange of views and for the development of collaborative relationships across countries and legal systems.

An International Guide to Patent Case Management for Judges, which owes its existence directly to dialogues that began at the WIPO IP Judges Forum, is the culmination of a remarkable effort on the part of prominent judges, noted practitioners, and leading legal academics representing ten dynamic and unique legal systems. Each national team has worked diligently to make the infrastructure and inner workings of its system for adjudication of patent cases transparent and understandable to those who otherwise might not be familiar with them. My University of California at Berkeley School of Law colleague, Professor Peter Menell, played a key role in framing the project. He and Berkeley Center for Law & Technology Fellow Allison Schmitt produced the U.S. chapter and supported the overall effort. Eun-Joo Min and her colleagues at WIPO have done a masterful job of editing the final product and organizing it in a way that makes it easily accessible to users.

Technological innovation is vital to economic and social progress, public health, and environmental protection. Patent protection plays a central role in promoting innovation, and as the impacts of innovation have increasingly transcended international boundaries, the need for a working familiarity with different national and sub-national patent systems has increased. Although their work often is the subject of international treaties and cooperation agreements, national patent systems, judicial institutions, and enforcement regimes vary significantly across jurisdictions. The overarching goals of this project are to enhance understanding of international patent protection, share best practices for improving patent case management, and promote international comity.

Among other things, the Guide explores, catalogs, and compares how major industrial nations structure their patent enforcement regimes: whether and to what extent judicial officers who adjudicate patent cases are required or expected to have relevant subject matter or technical expertise; whether determinations of patent validity and infringement are the subject of bifurcated or unified proceedings; the process and legal effect of judicial claim construction; and each system’s approach to pre-hearing investigation, including the role of the parties in presenting and arguing the significance of references to prior art. Each country has its own way of addressing these questions, and each has a wealth of experience and perspective as to which this Guide is intended to provide substantive and procedural details.

Each constituency within the scope of WIPO’s broader mandate will find value in these pages. Judges who preside over cases involving parallel proceedings in different countries will have access to more specific and practical information about how matters are handled in other jurisdictions and may bear upon their own adjudicative process. Lawyers and litigants considering the strategic interplay among cases in multiple countries involving the same technology will gain additional insight into the frameworks of the legal systems involved. And scholars who study patent litigation and its impact on technology and innovation generally will find experience-based detail not readily apparent in the language of statutes and treatises.

The Guide is also intended as a source of good ideas as nations and the global community struggle to address many of the greatest challenges, from climate change to pandemics. Even as each country has chosen to promote innovation in a manner that reflects its own history, culture and values, the success of WIPO’s annual IP Judges Forum has shown that judges truly value learning from each other. The wisdom and insights shared by the national teams that have contributed to this publication are likely to affect their international colleagues in subtle yet important ways.

Jeremy Fogel

Executive Director, Berkeley Judicial Institute

Former Judge and Director of the Federal Judicial Center

in the United States of America