An International Guide to
Patent Case Management for Judges

Full guide

Download full guide Download current chapter
WIPO Translate
Google Translate

1.2 Patent systems and patent institutions

1.2.1 Overview of the patent system

Every chapter starts with a general description of the patent system in that jurisdiction, including the origins of the patent law and the types of patents protected under each respective regime. In addition to invention patents protected in all jurisdictions, some countries provide protection for so-called “minor inventions,” frequently in the form of utility models, which may play a significant role in the local innovation system.5 This Guide primarily addresses judicial proceedings for invention patents. The chapters also note, where available, mechanisms to extend the scope of protection for an improvement introduced in the object of the invention;6 or duration of (invention) patent rights to compensate for the long time required to obtain regulatory approval.7

While in most countries patent rights are obtained through national processes and these national rights are mutually independent, in some jurisdictions patent rights may also come into existence through regional patent instruments that facilitate protection across borders. This feature gives rise to unique considerations in judicial proceedings.8

1.2.2 Patent offices and administrative proceedings

Patent offices are responsible for administering the patent system, including the examination and grant of patents. Frequently, these offices administer opposition or third party observation mechanisms that make it possible for third parties to intervene in the patent examination process before the grant of a patent, as well as administrative revocation and invalidation mechanisms to challenge a patent after its grant.9 Some jurisdictions also make available procedures to oppose a patent for a limited time after grant, in addition to other ways of challenging validity. Post-grant mechanisms usually allow for the correction of the scope of the patent by way of limiting the claims. In some jurisdictions, patent offices determine applications for declarations of non-infringement; claims of infringement (with the agreement of the parties); entitlement to patents; compensation for employees; and licenses, including compulsory licenses.10 Some patent offices also operate opinion schemes through which they issue nonbinding, advisory opinions on various patent issues including infringement, patentability or (in)sufficiency of disclosure.11

While the design of such patent office administrative review mechanisms differs in each of the reviewed jurisdictions, the common objective is to provide an effective and cost-efficient means of increasing patent quality and resolving patent disputes, particularly those related to validity. These mechanisms serve as an alternative to potentially lengthy and costly judicial proceedings.

1.2.3 Judicial institutions and their specialization

The judicial structure responsible for handling patent disputes is discussed in the ten chapters, highlighting the specialized elements specific to patents.12 The nature of judicial specialization varies among countries and takes different forms, including specialized divisions within existing civil or commercial courts,13 stand-alone courts specialized in patent cases,14 or a combination of both.15 Specialization can occur at the first instance or appeal level, and the final decision is often made by a non-specialized higher court.16 In some jurisdictions, there is no specific assignment of patent cases, but courts can attain specialization through the concentration of patent cases.17

The type and profile of the adjudicators who make up the court may also differ, including legally qualified or technically qualified18 judges, as well as juries.19 Some jurisdictions are based on a judicial career system, where judges normally embark on a judicial career early on and, at times, with mandatory rotation between courts on a regular basis.20 In those jurisdictions, efforts will be made for patent cases to secure judges who have studied science or engineering and provide regular training on technical matters. In other jurisdictions, judges are recruited from the ranks of qualified lawyers who have practiced patent law for a substantial time.21

Many jurisdictions have court personnel who are well-versed in technology and in analyzing technical evidence to support the judges during the pendency of the patent case.22 Their role may range from recording evidence when manufacturing processes need to be ascertained to inquiring about and reporting upon any question of fact or opinion. They do not address questions of interpretation of the law and do not assist the judge in deciding the case. In some jurisdictions, courts have the authority to appoint advisers who can assist the court in understanding the technology and the technical evidence presented in the case.23