1.1 Patent litigation and the role of the justice system
The patent system encourages and protects inventions to develop and improve technologies in support of innovation. For this instrumental purpose of the patent system to be fully realized, patentees must be able to enforce their rights and alleged infringers must be allowed to effectively defend their rights, including by challenging a patent’s validity. This requires not only a robust legal framework for patents, but also a fair and effective justice system that provides predictability for market structures and contributes to the broad balance of public considerations envisaged in the patent system.
Any justice system for patents will be molded by the technical specificities of patent disputes, which are frequently characterized by complex procedures that address dynamic technological facts. Patent disputes commonly raise questions relating to the boundaries of innovative activities such as patentable subject matter, as well as infringing activities enabled by technologies unforeseen at the time the patent was filed. In addition, they may involve high economic stakes – resulting in business-altering injunctions or multi-million dollar damages – and require significant legal costs, amid uncertain outcome. Furthermore, the resolution of patent disputes may have a wider impact beyond the parties involved, altering the direction of an industry and carrying broader economic and social consequences. Courts are called upon to calibrate the balance between the public interest in effectively enforcing patent monopolies to advance the innovation-promoting purposes of the patent system, and other public interests, such as ensuring fair competition in the marketplace by preventing anticompetitive practices, or ensuring fair access to life-saving technologies in the domain of public health.
The ramifications of patent litigation may even extend beyond the territorial boundaries of the patent rights and of the court’s jurisdiction. In today’s global market, where technology products are enforced by a web of territorial patent rights, it is not unusual for major patent disputes to be litigated in multiple jurisdictions. For example, a party who is a defendant to an infringement suit in one jurisdiction may initiate a patent revocation action or seek a declaration of non-infringement in a different jurisdiction, or a deep-pocketed patentee may initiate legal battles in multiple countries, leading to a series of lawsuits in various courts around the world. Courts are then asked to resolve complex disputes that involve non-domestic elements – such as foreign parties, foreign IP rights, or infringing acts committed in foreign territories – and at times manage interaction with parallel proceedings in foreign courts.
While the time and cost of patent proceedings will vary considerably among different countries, the complexities of patent proceedings frequently result in longer and more costly legal processes in comparison to other types of litigation. The high cost of patent litigation is a concern not only for parties – whose unequal access to financial resources may lead to suboptimal litigation outcomes – but also for judicial systems, with the absorption of their public resources raising concerns about fair delivery of justice.
Given these unique aspects of patent litigation, judicial authorities in many countries are working to streamline patent proceedings with the overarching goal of providing justice expeditiously, with reasonable costs, and ensuring that parties, in particular small and medium-sized enterprises, can present their case and participate in the proceedings efficiently and fairly.
1.1.1 An International Guide to Patent Case Management for Judges – its purpose
An International Guide to Patent Case Management for Judges highlights the significant progress achieved in patent case management in ten patent-heavy jurisdictions, through structural reform of courts, statutory revisions, and implementation of innovative court practices, supported by judicial education.
As globalization leads to the homogenization of legal problems, it is hoped that this publication will serve as a source of inspiration and comparison for procedural innovation and improved solutions in patent case management, and contribute to coherence and mutual respect between distinct legal systems and judicial structures across different countries. At the same time, the approaches described in the Guide reveal that the unique characteristics of patent case management by courts have intimate connections with the normative, structural and socio-economic background of each jurisdiction, and any consideration for enhanced efficiencies in judicial case management must take into account the unique characteristics of that jurisdiction.
Each chapter of the Guide offers an overview of the patent system in the respective jurisdiction, including information on the role of patent offices in evaluating and deciding on patent validity, as well as the judicial structures responsible for resolving patent disputes. Thereafter, the chapters are structured based on the different stages of patent litigation in civil infringement cases. These stages include early case management, claim construction, provisional measures, discovery and gathering of information, summary judgment, evidence, trial and remedies. The chapters detail the procedures and practices of case management, while integrating pertinent patent law doctrines.
The features of judicial case management grow out of distinctive legal traditions (common law or civil law), court structures (unified or bifurcated for patent validity and infringement questions), levels of specialization and division of competence (general or specialized courts, at first or appellate instance), the use of discovery (general or limited) or experts (court or party-appointed), and the type and qualification of adjudicators (legally or technically qualified judges or juries). Some chapters address issues that are particularly relevant in their jurisdiction, such as case management for standard essential patents,1 pharmaceutical patents,2 compulsory licenses,3 or criminal liability for patent infringement.4
The features addressed by the Guide are summarized briefly below.