This first chapter sets out the basic options for IP judicial structures, including judicial and quasi-judicial bodies. It then examines the policy considerations and themes that may inform the design of such structures in any given jurisdiction.
The purpose of this chapter is to give interested parties a general, comprehensive overview of the structures and policy options possible when determining the location and scope of a specialized IP judiciary, as well as when considering a generalist approach without specialization. This will be followed by a discussion of policy themes – that is, the main systemic lines along which jurisdictions diverge or converge – and of the reasons why policymakers may favor specialization. These include:
location decisions informed by issues of access to justice (i.e., the equal distribution of jurisdiction between regional divisions or chambers);
factors supporting centralized specialization (i.e., a single centralized court in the capital); or
those centering litigants' convenience (i.e., regional divisions or chambers situated only in those cities with the greatest volume of IP litigation).
While this report is focused, to some degree, on those jurisdictions that have introduced elements of specialized IP judiciary, it is important to remember that this may not be appropriate in all jurisdictions and that the degree of specialization differs considerably among those selected for this study. Indeed, in some instances, the bulk of IP disputes are still heard by the general civil or commercial judiciary.
1.1 Structural options for handling intellectual property disputes
The main structural options for the judicial administration of IP disputes comprise:
quasi-judicial bodies within or outside IP offices;
stand-alone IP courts;
IP divisions or chambers, or specialized judges, within a general court;
the concentration of jurisdiction in a non-IP exclusive court; and
general civil or commercial courts.
Quasi-judicial bodies
Quasi-judicial bodies within IP offices handling appeals
The selected jurisdictions have established different forms of quasi-judicial adjudication at their national IP offices. Such review may be delegated to a specialized body, such as a board of appeal, or to the president of the office itself. The reason why such appellate structures may be established within the IP offices rather than outside of them (e.g., within the judicial structure) is one of procedural efficiency.
In some jurisdictions, such internal appellate review exists in relation to all types of registrable IP right; in others, the office may be competent for appeals relating only to certain types of right. In Brazil, Japan, the Philippines and the United States of America, internal review is available for all registrable IP rights:
In Brazil and the Philippines, appeal lies to the director or president of the national IP office.
In Japan and the United States of America, appellate bodies have been established to review appeals from the national IP offices.
Decisions in both of these instances can be appealed to courts of appeal or specialized IP courts.
In other jurisdictions, the internal review by quasi-judicial bodies covers only selected types of IP dispute.
In Canada, the Commissioner of Patents, supported by the Patent Appeal Board, hears appeals related to patent and industrial design applications, while the rest of the appeals are directed to the Federal Court.
Other jurisdictions provide for either a simplified review at the national IP office or direct appeals to courts.
In France, appeal from a decision of the Institut National de la Propriété Industrielle [National Institute of Intellectual Property] (INPI) generally lies directly to the courts of appeal.
Similarly, in Singapore, appeals from the decisions of the Registrar lie to the General Division of the High Court.
In Germany, appeals from the decisions of the national IP office are filed with the office itself, which may either find the appeal well founded and annul the appealed decision or transfer the appeal to the Bundespatentgericht [Federal Patent Court] (BPG).
In Kenya, appeals concerning the registration of IP rights lie either to the High Court or to the Industrial Property Tribunal.
In England and Wales, internal review exists in a limited form through an ex parte review before a hearing officer.
Quasi-judicial bodies within IP offices handling matters other than appeals
In addition to dealing with appeals against decisions of the examining divisions, some jurisdictions have established additional quasi-judicial bodies within their national IP offices to deal with other types of dispute.
The Intellectual Property Office of the Philippines (IPOPHL) deals with a broad spectrum of disputes through its different bureaus (e.g., the Bureau of Copyright and Related Rights, the Bureau of Legal Affairs, and the Documentation, Information and Technology Transfer Bureau).
The Bureau of Copyright and Related Rights performs a similar function to a copyright tribunal; as such, it will be discussed in the next section (see “Copyright tribunals (copyright boards)”).
The Bureau of Legal Affairs, while also authorized to consider oppositions to the registration of marks and cancellation of registrations of marks, patents, utility models and industrial designs, possesses original jurisdiction in administrative complaints for law violations involving IP rights where the total damages claimed are not less than PHP 200,000.
The Documentation, Information and Technology Transfer Bureau has the power to resolve disputes on technology transfer payments.
Finally, the Director General of the IPOPHL decides on appeals against the decisions of these bureaus, as well as of the other bureaus of the IPOPHL charged with granting IP rights, and considers petitions for compulsory licensing.
A feature common to all the selected jurisdictions is how opposition proceedings are conducted within the national IP office.
Such proceedings will be conducted either by a registrar – perhaps represented by the president of the office, as is the case in France and Singapore – or by a specialized administrative or quasi-judicial body – as is the case in Canada, where the Trademarks Opposition Board decides on oppositions to the registration of a trademark, expungements of a trademark registration and objections to entering a geographical indication on the list.
Quasi-judicial bodies outside of IP offices
Copyright tribunals (copyright boards)
The most ubiquitous form of quasi-judicial bodies dealing with IP cases in the selected jurisdictions is the copyright tribunal, sometimes also referred to as a copyright board. Such bodies have been established in Canada, Kenya, the Philippines, Singapore and the United Kingdom.
While the exact scope of their jurisdiction differs, these boards will generally hear cases related to collective management organizations (CMOs), copyright licensing and the setting of royalty tariffs.
The United States of America has also established other specialized bodies to deal with copyright claims and these have an expanded role (see below).
The Copyright Board of Canada approves tariffs for content in which CMOs manage the rights, settles individual cases when parties disagree and grants licenses for the use of content when the rights owner(s) cannot be located.
In Singapore, the Copyright Tribunals hear disputes related to licenses and licensing schemes, determine royalties for the recording of musical works and establish equitable remuneration for various uses of copyrighted materials. They also set out how the Singapore Government may use copyright materials. While incorporated into the structure of Singapore's national IP office, the Copyright Tribunals are de facto a quasi-judicial body in their own right. Under section 480 of the Copyright Act 2021, their president must be, or be qualified to be, a district judge and the deputy president must have been a qualified legal professional for at least five years. Under sections 480 and 481, all are appointed by the relevant government minister.
In the Philippines, the Bureau of Copyright and Related Rights hears disputes relating to the terms of a license involving the author's right to public performance or other communication of the author's work. However, unlike its Singaporean counterpart, the Philippines' Bureau is a division of the national IP office rather than an independent quasi-judicial body. For example, its director is appointed by the president of the office and no requirements are established as to candidates' legal knowledge or experience.
In the United Kingdom (i.e., not only in England and Wales), the Copyright Tribunal is an independent legal body whose main function is to hear disputes involving collecting societies accused of abusing their power by refusing licenses unreasonably or imposing unreasonable terms of licensing.
In the United States of America, the Copyright Office and the Copyright Office Review Board have been established to, respectively, register copyright claims and conduct final administrative review of any refusal to register. Additionally, the Copyright Claims Board has been established to deal with certain types of copyright claim the value of which does not exceed USD 30,000 (i.e., infringement claims, declarations of noninfringement and claims of misrepresentation in notices under the Digital Millennium Copyright Act of 1998).
The policy reasons considered pivotal in decisions to establish copyright tribunals include the accessibility and efficiency of proceedings, as well as the need for a less formal setting.
In Canada, the Copyright Board is charged with setting fair and equitable tariffs and licenses through timely processes.
In Singapore, the Copyright Tribunals conduct proceedings with “as little formality, and with as much expedition” as the requirements of the Copyright Act 2021 permit.
Other quasi-judicial bodies
Quasi-judicial bodies other than copyright tribunals (copyright boards) have been established to:
consider the impact of IP rights from the perspective of unfair trade practices (e.g., the United States of America's International Trade Commission);
deal with complaints regarding registrations of company names (e.g., the United Kingdom's Company Names Tribunal);
decide on national listings of new varieties of plant, plant variety rights and certain forestry matters; and
determine any matters relating directly or otherwise to the infringement of plant breeders' rights that the parties refer by means of an arbitration agreement (e.g., to the United Kingdom's Plant Varieties and Seeds Tribunal).
Finally, a quasi-judicial body may handle appeals from the decisions of the national IP office.
In Costa Rica, the Tribunal Registral Administrativo [Administrative Registration Tribunal] has exclusive jurisdiction to hear appeals from the decisions of the Registro Nacional [National Registry]. The Tribunal is financially and administratively independent.
In the United Kingdom, decisions of the Comptroller-General of Patents, Designs and Trade Marks may be appealed to Appointed Persons – that is, persons appointed directly by the Lord Chancellor, independently of the Intellectual Property Office of the United Kingdom (UKIPO). Such persons are selected from among candidates who must be senior legal practitioners and who may only review the original decisions rather than reassess the case.
Stand-alone IP courts
None of the jurisdictions selected for this study has established a stand-alone IP court that deals with all types, or a majority of types, of IP dispute; instead, some of the jurisdictions have established in their existing courts specialized divisions or chambers that deal with certain specific types of IP dispute and which – in contrast to other divisions or chambers – possess some degree of institutional independence. These divisions or chambers differ across jurisdictions in terms of their organizational structure, legal character and the types of dispute with which they deal.
Because of this varying degree of independence, the distinction between a stand-alone IP court and specialized IP divisions or chambers in civil or commercial courts is not always clear-cut. Among other things, this is because judicial reform may happen organically rather than through broad legislative mechanisms. As a result, in some cases, a specialized division or chamber that is legally located as part of a general court nevertheless operates with significant independence and recognition.
Stand-alone IP courts with broad specialization
As noted above, no unequivocal example of a stand-alone IP court can be identified among the jurisdictions selected for this study.
In England and Wales, the combined Patents Court and the Intellectual Property Enterprise Court (IPEC) are exclusively authorized to deal with patent, registered design, semiconductor topography and plant variety disputes, follow a specialized procedure and are treated as separate venues by practitioners. While de jure both are technically specialized lists of the Chancery Division, de facto they function as independent courts.
Similarly, in Japan, the specialized Intellectual Property High Court was created by means of legislative reform and, despite being a branch of the Tokyo High Court, it possesses a degree of independence. It was established under a special statutory provision and it is authorized to exercise independent authority in relation to certain judicial administrative affairs, such as allocating judicial procedures and assigning judges. Nonetheless, it too remains within the general court system and cannot be characterized as a stand-alone court.
In Kenya, the Industrial Property Tribunal has exclusive jurisdiction over all infringement and validity disputes for patents, registered designs and utility models, as well as over some other matters, such as compulsory licensing. It may also deal with the so-called technovations – that is, technical solutions proposed by an employee that have not been considered by the employee's enterprise. It excludes, however, nonindustrial disputes, such as copyright. Because its sole role is to adjudicate IP disputes and it functionally acts as a court of first instance, the Tribunal might be seen as a stand-alone IP court, but Kenyan law holds that the Tribunal's members are not judges. It is therefore more accurate to refer to it as a quasi-judicial body adjudicating IP disputes.
It is worth noting that in none of these examples is the court's or tribunal's jurisdiction universal across all types of IP right.
These courts or tribunals deal primarily with the most technical disputes – that is, patents, utility models or, sometimes registered designs. No jurisdiction among those selected for this study has established a stand-alone IP court to deal with other types of IP dispute, such as trademark and copyright – although, in practice, in England and Wales, the IPEC functions as the decisively preferred venue for disputes involving small claims (i.e., of below GBP 500,000).
Stand-alone IP courts with a narrow specialization
Some jurisdictions have established stand-alone courts that have a jurisdiction narrowed in terms of either the type of IP right or the type of dispute (i.e., validity or infringement).
The German BPG has exclusive jurisdiction to deal with appeals against decisions of the German Deutsches Patent- und Markenamt [Patent and Trademark Office] (DPMA) and with patent validity disputes inter partes. Thus, while dealing with several types of IP right, the BPG decides only on validity and never on infringement.
The Kenyan Copyright Tribunal (considered a specialized tribunal within the judiciary of Kenya)
IP divisions or chambers, or specialized judges, within a general court
The most common type of specialized IP arrangement among the jurisdictions selected for this study are IP divisions or chambers. This type of arrangement is present in all of the jurisdictions with the exception of: Kenya, which has instead established a stand-alone tribunal; the United States of America, which ensures specialization of first-instance judges through other means; the Philippines and Costa Rica. The specific case of the IPEC and the Patents Court in England and Wales, as well as the Intellectual Property High Court in Japan, has already been explained (see “Stand-alone IP courts with broad specialization”).
As further discussed below, the reasons why divisions or chambers are the most commonplace arrangement for the judicial administration of IP disputes are twofold: the organic nature of judicial reform; and a pursuit of structural flexibility.
The legal basis and structure of such divisions or chambers will differ between jurisdictions.
In Germany, specialized chambers of courts with concentrated jurisdiction may be established by the self-governing mechanisms of Landesgerichte [regional courts] and Amtsgerichte [local courts] even though the concentration of jurisdiction is a matter left for the Länder [federal state governments].
In Brazil, specialized chambers are introduced by self-governing court mechanisms and do not require any prior authorization from the government.
In France, where specialization is supported through concentration, specialized IP divisions or chambers are established by the courts themselves, in accordance with the generally established practice of dividing courts.
In Canada, the Intellectual Property and Competition Specialized Chamber of the Canadian Federal Court (IPCSP), which has original jurisdiction to hear IP cases and appellate jurisdiction over the registration of IP rights, was established by the Federal Court as a pilot project with the aim of developing expertise within the court, and remains in operation.
In Japan, the Tokyo and Osaka District Courts are exclusively competent to hear infringement disputes concerning patents, utility models, semiconductor topographies and the rights of authors of computer programs. The two Courts have, respectively, four and two specialized IP chambers.
In Singapore, the General Division of the High Court has a specialist list of docketed judges and a team of assistant registrars with expertise in IP and information technology law. Additionally, the Singapore International Commercial Court (SICC) was established as part of the General Division of the High Court to hear cases of an “international and commercial nature” and actions that relate to “an in personam intellectual property dispute”.
In the United States of America, specialization of the first-instance judges at the District Court level is supported through the allocation of IP disputes to certain selected judges in accordance with their skills and declared preferences. This may be formalized, as in the Patent Pilot Program under which, of 315 active and senior district judges, 65 volunteered (as so-called designated judges) to receive patent cases from other (nondesignated) judges.
The main advantage of the specialized divisions or chambers, as well as the reason why they are such a popular type of structure, is their flexibility.
They are usually established by the courts in response to demand for litigation in a given location.
Courts can increase or decrease the number of specialized chambers with which it responds to that demand.
Judges can be allocated in accordance with their knowledge and skill sets.
Finally, specialized divisions or chambers may be vested with jurisdiction over both IP and non-IP disputes. For example, the specialized chamber of the Canadian Federal Court – that is, the IPCSP – deals with both IP and competition disputes, while many Brazilian specialized chambers are business chambers that adjudicate both IP and other corporate matters.
It is also important to note that similar results may be achieved even without formally distinguishable divisions or chambers. The United States of America's Patent Pilot Program demonstrates that judicial expertise in IP cases may be promoted by consistently allocating IP disputes among only a few specialist judges.
Which of these solutions proves the most effective will depend on the character of the jurisdiction in question.
Concentration of jurisdiction in a non-IP exclusive court
Concentration of jurisdiction may be a mechanism that facilitates greater judicial specialization, regardless of whether or not the jurisdiction has provided for court divisions or chambers. By centralizing IP cases among a few designated courts, the jurisdiction can more easily allocate relevant resources effectively and ensure sufficient specialized judges. This model also benefits from economies of scale: a single court serving a broad geographic area can justify greater investment in technical expertise and infrastructure.
This type of arrangement is present in France, Germany, Japan, the Philippines and the United States of America.
In France, 10 out of 164 first-instance courts have been selected to deal with IP disputes other than those involving patents, utility models, semiconductor protection, European trademarks and Community designs, which are under the exclusive jurisdiction of the tribunal judiciaire de Paris [Paris Judicial Tribunal]. The basis for concentration in France is statutory.
In Germany, concentration arrangements among the Länder have resulted in 21 Landesgerichte with exclusive jurisdiction in cases of trademark infringement and 12 Landesgerichte having exclusive jurisdiction over patent infringement.
In the Philippines, the Supreme Court has designated specific branches authorized to deal with IP disputes “in the interest of an efficient administration of justice and to ensure speedy disposition of cases involving [the] violation of [IP rights]”.
Another example of concentration is the United States of America's Court of Appeals for the Federal Circuit (CAFC), in which the jurisdiction to deal with all patent and plant varieties appeals was concentrated. The Patent Pilot Program can also be treated as a concentration of patent cases before volunteer specialist judges in selected federal district courts.
General civil or commercial courts
Some of the jurisdictions selected for this study have opted to assign some or all IP disputes to the general civil or commercial courts. Nevertheless, the jurisdiction of these courts may be limited because it is concurrent with that of the specialized courts, or because it extends only to infringement claims or certain types of IP case.
In Brazil, all infringement cases are heard by state courts, and validity cases by federal courts. Thus, unless a specialized chamber is established at a given court, IP disputes in Brazil are considered by general civil courts.
In Costa Rica, all infringement disputes go to the general civil courts.
In Canada, provincial courts have concurrent jurisdiction with the Federal Court over infringement disputes.
In France and Germany, in the absence of specialized divisions or chambers, general civil or commercial courts deal with all infringement disputes; in France, they also deal with validity disputes. In practice, however, such chambers are commonly introduced, especially for the technical types of dispute.
In Japan, the general civil judiciary deals with infringement disputes concerning designs, trademarks, copyright (excluding authorship rights for a computer program work), breeders' rights and unfair competition claims.
In Kenya, any IP case may be started in the High Court, which is a general civil court; the High Court may, however, determine that a petitioner must appeal to a specialized tribunal before approaching it.
In Singapore, state courts consider cases involving breach of confidence claims, the value of which does not exceed SGD 250,000.
In the United States of America, there is no formal specialization, with the exception of the measures discussed elsewhere in this chapter, and hence all first-instance cases are decided before the general civil judiciary.
In England and Wales, the role of the general civil judiciary is very limited. The county courts rarely consider IP cases, although one of the reasons why some IP proceedings are started at that level is that not all litigants are aware that a specialized IP judiciary exists in England and Wales. In practice, what often happens is that if a case is commenced at a county court, the judge transfers the case to the IPEC. (In Scotland and Northern Ireland, all IP disputes are heard by the general civil judiciary, subject to the rules on jurisdiction.)
In terms of the role of the commercial judiciary, examples can be found in France, Germany and Singapore.
In France, commercial courts deal with disputes involving trade secrets or unfair competition claims if certain other statutory conditions are met.
In Germany, commercial chambers, which may be established by the Länder, deal with disputes regarding trademarks, registered designs and unfair competition.
In Singapore, the SICC considers claims of an international and commercial nature, as well as actions related to “an in personam intellectual property dispute” with an international nature.
General civil judiciary, therefore remains an important element of IP adjudication – albeit usually with some limitations, as follows.
The jurisdiction of civil courts is generally restricted to infringement disputes.
In some cases, it may also be limited to some types of IP dispute – usually those characterized by a lower level of technicality.
In addition, a commercial court may be authorized to deal with certain types of IP dispute – primarily, unfair competition, but potentially also trademark, registered design or trade secret claims.
1.2 Deciding among the structural options
Specialized stand-alone IP courts
None of the jurisdictions selected for this study has introduced a single stand-alone court that deals with all types of IP dispute, but some of the judicial structures found among them are characterized by elements of such a forum.
In Kenya, the Industrial Property Tribunal deals with IP disputes of only the most technical types – that is, those involving patents, registered designs and utility models.
In England and Wales, almost all IP disputes are considered by specialized divisions (i.e., the IPEC and the Patents Court) or by other forms of specialized IP judiciary, which – in comparison to those of other jurisdictions – are independent from the non-specialised divisions.
In Japan, the Intellectual Property High Court, although formally a specialized division of the Tokyo High Court (see the subsequent section), deals exclusively with the most technical IP rights, such as patents and utility models.
In other jurisdictions, stand-alone IP courts have capacity that is limited to either a type of IP right or a type of dispute (i.e., validity or infringement). An example is the German BPG, which considers only the validity of registrable IP rights.
None of the jurisdictions has introduced a stand-alone court for only trademark or only copyright disputes, with the exception of the Kenyan Copyright Tribunal. In other jurisdictions, similar functions may be performed by quasi-judicial bodies.
Overall, the main feature that characterizes those stand-alone courts that have been established is the technical nature of the disputes with which they deal. In this context, one of the perceived benefits of a stand-alone court could be the role played by technically qualified judges, a feature not found in other types of judicial structures. However, out of the selected jurisdictions that have stand-alone courts, technically qualified judges are only found in the German BPG. (For more on technically qualified judges and technical advisors, see Chapter 2.)
Specialized IP divisions or chambers and concentration of cases
It is clear that specialized IP divisions or chambers are a common solution among the jurisdictions selected for this study – especially for disputes involving less technically complex allegations of infringement.
It appears that the reasons why specialized divisions or chambers find favor among the jurisdictions are that they offer structural flexibility and that they can emerge when a judicial system develops organically.
Canada's IPCSP was established in 2023 as a result of a judicial initiative.
In Germany, specialization is left to the courts' self-governing mechanisms (known as the Geschäftsverteilungsplan [roster allocating court business] – although with a clear legislative basis and with potential support from Länder, which may introduce concentration.
In other cases, where the specialized divisions or chambers were established by legislation, further factors were found to be relevant.
The purpose of the Intellectual Property High Court in Japan is said to be:
… to ensure more effective and speedy trial proceedings in IP cases, based on the understanding that the role of the judiciary has become more important in the proper protection of intellectual property along with the active use of intellectual property in the Japanese economy and society, thereby enhancing the judicial services specializing in handling IP cases.
This does demonstrate, however, that the distinction between specialized IP divisions or chambers and a stand-alone IP court may not be so neatly drawn.
While the Intellectual Property High Court in Japan is described as a “special branch within the Tokyo High Court”, it has “independent authority with respect to case docketing and other certain judicial administrative services”.
An unusual example of a relatively independent specialized division is the IPEC in England and Wales, which was established with a view to improving the quality, accessibility and efficiency of IP adjudication. It is also the dominant venue for low-value trademark, copyright and other nontechnical disputes. While the IPEC employs specialist judges and uses specialized rules of procedure under Part 63 of the Civil Procedure Rules (CPR), more complex and technical cases are decided by the Patents Court and the general Chancery Division.
Policymakers can therefore focus less on terminological matters, and more on issues such as:
the degree of independence in terms of case docketing;
the allocation of judges;
budgetary independence;
selection criteria for the judges;
the turnover of judges from specialized to general lists; and
the procedures that the court applies (i.e., general or specialized).
When a jurisdiction balances these moving parts, what is formally a specialized chamber may function with a significant degree of autonomy as though it were a stand-alone court.
In some circumstances, specialization has been achieved not by designating a division or chamber, as such, but rather by concentrating cases among a few specially designated judges (e.g., the United States of America's Patent Pilot Program).
General civil or commercial courts
At the other end of the spectrum, if the judiciary has not determined that the jurisdiction would benefit from specialized solutions and where empirical evidence suggests the jurisdiction deals with relatively few IP cases, policymakers might reasonably decide not to introduce any form of specialized IP judiciary at all.
In such circumstances, a jurisdiction may still consider some measures to develop knowledge of IP law among the national judiciary, such as by offering them training or providing them with access to technical expertise.
Alternative and blended approaches
On its face, specialized IP divisions or chambers appear to be the most common form of specialized structure among the selected jurisdictions (see Table 1).
Entirely or relatively independent specialized divisions or chambers are established to deal with either all or only selected types of technical dispute.
Stand-alone courts appear to be used when the system incorporates technically qualified judges or when the court is to have a specific function, such as that of the IPEC in England and Wales.
It is worth emphasizing, however, that the distinctions drawn here are less clear-cut in practice.
As the examples and Table 1 demonstrate, each of the jurisdictions selected for this study has adopted a blend of these five approaches. This is unsurprising, given that judicial systems are shaped both by a jurisdiction's legal traditions, which may necessitate particular institutional arrangements, and by ongoing constraints on time and resources.
The French system combines concentration and specialized chambers: IP cases are considered by only certain selected courts, which usually establish specialized chambers to support specialization.
In Germany, a specialized stand-alone court deals with validity, while specialized IP divisions or chambers deal with infringement.
In Japan, the specialized IP divisions deal with validity and with infringement of the technical IP rights, whereas the general judiciary decides on infringement of nontechnical IP rights.
For further discussion of technical and nontechnical IP rights, see “Material scope of IP courts’ jurisdiction”.
Moreover, several middle-ground alternatives or blended approaches can be identified.
The general civil judiciary may deal with infringement disputes, while quasi-judicial bodies or specialized IP courts deal with those involving issues of validity.
The general civil judiciary may deal with only nontechnical types of dispute, such as copyright or trademarks, while quasi-judicial bodies or specialized IP courts deal with those of a more technical nature, such as those involving patents.
Another option – if the nature of the national judiciary allows – is the United States of America's approach of allocating certain IP disputes to a limited number of judges from the general courts.
A jurisdiction may opt to concentrate jurisdiction over all or some IP disputes within a few specific courts, which may convene specialized divisions or chambers.
Commercial courts may receive certain disputes related to trade, such as those alleging unfair competition and perhaps those relating to trade secrets, trademarks or registered designs.
Another type of blended arrangement involves allocating a certain type of IP dispute to a specialized court that does not deal primarily with IP disputes.
In Costa Rica, the Juzgado Agrario [Agrarian Court] and Tribunal Agrario [Agrarian Tribunal] generally deal with agri-environmental cases, but they also consider IP disputes when there is a connection to agricultural production or related activities and services, as well as claims related to plant varieties.
1.3 Other issues informing structural decisions
Specialization at first, appellate or final instances
In most jurisdictions selected for this study, specialization is found less commonly at the appellate level than it is at first instance. Nonetheless, specialized appellate structures exist.
In France, the tribunaux judiciaires [first-instance tribunals] and courts of appeal benefit from specialized chambers.
In Germany, the same is true of the Landesgerichte, the Oberlandesgerichte [higher regional courts] (OLG) and the Bundesgerichtshof [Federal Court of Justice] (BGH). The BPG, which is the court of final instance for IP disputes, has two IP specialized civil panels within its structure.
In England and Wales, while the first instance is highly specialized, no formal specialization exists at the appellate level – even though the Court of Appeal of England and Wales usually employs judges experienced in IP law.
The United States of America is the only country in which formal specialization is established primarily at the appellate level. The purpose of introducing the CAFC was explicitly to provide greater consistency of jurisprudence.
At the same time, the rationale behind establishing a first-instance court is often to deliver more timely and less costly litigation in infringement or validity disputes inter partes by means of skillful case management and consistent jurisprudence.
In relation to appeals against the decisions of national IP offices, the solutions adopted differ considerably from jurisdiction to jurisdiction.
In Brazil and Canada, appeals against the decisions of the national IP offices are allocated to the specialized divisions or chambers of the first instance federal courts.
In France, Japan, the Philippines and the United States of America, the courts authorized to hear appeals are courts at the appeal level, with specialized IP divisions or chambers in France and Japan, and the United States of America's CAFC also offering a significant degree of specialization.
In Germany, the judicial appeal track lies to the BPG, a stand-alone IP court.
In England and Wales, appeal generally lies to the court hearing cases at first instance (i.e., the general Chancery Division, the Patents Court and the IPEC) and to Appointed Persons (for trademark and design cases).
In Costa Rica, appeals against the decisions of the Tribunal Registral Administrativo go to the Tribunal Contencioso Administrativo y Civil de Hacienda.
It might be concluded that, among the jurisdictions selected, if the main reason for specialization is improving the consistency of jurisprudence, then specialization is introduced at the appellate level. If the main objective is ensuring effective decisions, then specialization is better introduced at first instance.
The situation is more complex with respect to appeals against the decisions of national IP offices, which may be allocated to both first-instance courts and courts of appeal. Usually, however, the court dealing with such an appeal appears to be either a specialized stand-alone court or a specialized division or chamber.
Territorial considerations
A further issue to consider when determining whether or not to create a specialized judiciary is where any such courts, or divisions or chambers, will be located.
Empirical data indicate that the volume of IP litigation is not distributed evenly within jurisdictions.
In France, statistics for 2009 indicated that only five first-instance tribunals (namely, Paris, Nanterre, Lille, Lyons and Marseilles) examined a decisive majority – 72 percent – of IP cases, while the other five (namely, Bordeaux, Fort-de-France, Nancy, Rennes and Strasbourg) accounted for only 4 percent.
In Germany, research reported in 2021 found that most patent cases are heard by the specialized chambers of Düsseldorf, Hamburg, Mannheim and Munich.
In the United States of America, data spanning 2008–22 evidenced that patent cases are predominantly filed in the Northern District of California (N.D. Cal.), Central District of California (C.D. Cal.), Delaware (D. Del.), Eastern District of Texas (E.D. Tex.) and Western District of Texas (W.D. Tex.).
In the context of these data, jurisdictions opt for concentration of jurisdiction.
The location of the designated courts appears to be directly connected with the volume of litigation and a jurisdiction will generally designate a court where numerous IP cases are already being heard.
Conversely, underuse of a specialized solution may lead to its withdrawal.
In the Philippines, the Supreme Court's 2003 Resolution Re Consolidation of Intellectual Property Court with Commercial Court referred explicitly to the fact that a number of courts initially designated as competent to hear IP cases had heard “zero (0) IP cases, and do not warrant their continued designations as Intellectual Property Courts”.
Some jurisdictions nevertheless opt to maintain a specialized judiciary in locations with relatively limited IP litigation.
In Germany, 12 Landesgerichte may hear patent cases, even though the majority of disputes are concentrated in only some of them.
In France, 10 tribunaux judiciaires have jurisdiction to hear IP disputes other than those heard exclusively by the tribunal judiciaire de Paris – even though, in practice, their activity in the field of IP law is limited. The reason why these courts retain such jurisdiction is to support access to justice – particularly that of individuals and small or medium-sized enterprises (SMEs). (By comparison, the tribunal judiciaire de Paris has exclusive jurisdiction over patents because most specialized law firms are located in that city.)
Consequently, the designation of competent courts appears to be based primarily on the volume of litigation in certain locations, while also supporting access to justice in others. In addition to these concerns, natural competition between regions may play a role – as has been noted, for example, in the United States of America, where patentees often choose the Delaware and Eastern Texas districts. Nonetheless, despite differences in the volume of litigation at each level, the United States of America has not opted to concentrate jurisdiction at first instance.
In this context, it appears that specialized divisions or chambers may be the most flexible solution to territorial issues. Divisions or chambers will generally be established by means of a judiciary's self-governing mechanisms and, as such, this type of structure can flexibly respond to demand. At the same time, courts can easily control the number of specialized chambers in response to changes in the volume of litigation.
In relation to stand-alone courts, or specialized divisions or chambers situated in one location only, analysis of the jurisdictions selected indicates several solutions supporting access.
In England and Wales, the specialized IP courts (i.e., the IPEC, the Patents Court and the general Chancery Division, which deals with commercial law disputes) have regional offices in six cities where the High Court's district registries are located – namely, Manchester, Birmingham, Leeds, Cardiff, Newcastle and Bristol.
Canada, by comparison, adheres to an iudex ambulans model. The Federal Court is resident in Ottawa, ON, but it regularly hears cases in Ottawa and Toronto, ON, Montréal, QC, and Vancouver, BC. It also has court facilities in Calgary and Edmonton, AB, and Halifax, NS. Nonetheless, an estimated 90 percent of complex cases (e.g., pharmaceutical patents) are heard in Toronto, since that is where many IP law firms are located. While parties may be resident in other jurisdictions, they are generally content to have the case heard wherever their counsel may be situated. Occasionally, court resources (e.g., courtrooms) may not be promptly available, so another city may be proposed for the sake of expediency.
Indeed, a similar arrangement may sometimes be available elsewhere.
While cases on the small claims track available at the IPEC in England and Wales are generally heard by judges located in Manchester, parties may apply for their case to be heard elsewhere. Likewise, while multitrack cases are generally heard in London, cases may be heard outside London “in particular where it saves costs”.
Exclusive and concurrent jurisdiction
The exclusive jurisdiction of specialized IP courts – such as, in England and Wales, the Patents Court and the IPEC, and in the United States of America, the CAFC – is mandatory and has its basis in statute (or statutory instrument). In both cases, this exclusivity applies only to the most technical types of IP dispute.
In other jurisdictions selected, while concentration will generally have both a statutory basis and a mandatory character, the establishment of specialized divisions or chambers is more usually a matter of internal judicial organization. This was found to be the case in Germany, France and the Philippines.
If the jurisdiction of an IP court is not exclusive, it generally operates in parallel with the broader civil judiciary and procedural rules may be in place to address the staying of proceedings. In addition, measures may exist to ensure that the parties to an IP dispute engage with specialized structures before resorting to the general judiciary.
In Kenya, while the High Court may generally be seized with any claim, including an IP-related claim, it may decide that the petitioner should first approach, for example, the Kenyan Industrial Property Tribunal (if the claim is within the Tribunal's jurisdiction).
One area in which jurisdiction over IP disputes is generally exclusive is appeals against the decisions of national IP offices. Even in this case, however, the mandatory character of exclusivity relates only to a particular court and not necessarily a specialized division or chamber.
In France, the jurisdiction over appeals against decisions of the INPI must be allocated to the cour d'appel de Paris [Court of Appeal of Paris], but whether the Court might convene any specialized IP structures remains moot.
Material scope of IP courts' jurisdiction
All of the jurisdictions selected for this study were found to distinguish between the varying types of IP right and to subject them to differing degrees of specialization.
The key distinction seems to be between so-called technical IP rights – most often, patents, utility models, registered designs and plant varieties – and so-called nontechnical IP rights – that is, copyright, trademarks or unregistered designs. In some jurisdictions, certain IP or related types of dispute – especially those involving trademarks, trade secrets and unfair competition – are classified as commercial disputes.
Generally, the more technical the IP right, the greater the degree of specialization.
In France, patents, utility models and semiconductor disputes are subject to a greater degree of specialization than are other IP rights. The former are heard exclusively by the tribunal judiciaire de Paris, while the latter are heard by 10 designated tribunaux judiciaires (see “Territorial considerations”).
In Germany, the classification of disputes as technical or nontechnical is not straightforward. The BPG is exclusively authorized to deal with validity for patents but not for inter partes validity disputes over trademarks, utility models and registered designs; since only patents are treated as requiring additional specialization, we might infer that these are the only types of right to be considered particularly technical. This inference is not supported, however, by the fact that technically qualified judges are involved not only in patent disputes but also in those involving utility models and – when a case raises questions of a particularly technical nature – designs.
In Japan, the distinction is explicitly acknowledged: technical disputes are decided by the Tokyo and Osaka District Courts, while nontechnical disputes are decided by other district courts.
In Kenya, the Industrial Property Tribunal deals with patents, industrial designs and utility models, while other IP disputes are heard by the general judiciary.
While no explicit distinction has been introduced in Singapore, patents are the only type of IP right subject to direct appeal to the Court of Appeal rather than to the Appellate Division of the High Court.
Copyright disputes are also the subject of additional specialization, but such specialization differs from that found in relation to patent disputes.
While patent cases are treated as demanding keen technical specialization, copyright disputes benefit from a more informal and localized setting – likely because claimants may be small collecting societies or individual creators rather than national or multinational corporations.
In Germany, copyright disputes with the value of the claims below EUR 2,500 are heard by the Amtsgerichte, while all other types of dispute are heard by the Landesgerichte.
In the United States of America, the Copyright Claims Board (CCB) provides a streamlined, voluntary alternative to the Federal Court for the resolution of certain copyright disputes of up to USD 30,000 (i.e., small claims).
Additionally, several among the selected jurisdictions have introduced copyright tribunals (or copyright boards) to deal with disputes concerning collecting societies and licensing. In England and Wales, Canada, the Philippines and Singapore, such tribunals or boards also deal with disputes concerning tariffs and CMOs. (See also “Copyright tribunals (copyright boards)”.)
The commercial judiciary – if such is introduced in a given jurisdiction – may deal with disputes involving trademarks, trade secrets, designs or unfair competition. The jurisdiction of such courts may be subject to additional requirements, such as the condition in France that the dispute must concern “actes de commerce [acts of commerce]”.
Some types of IP dispute are difficult to classify as either technical or nontechnical. This is especially the case with design claims, which can involve very complex technical questions requiring specialized expertise but can equally be very simple. This is reflected in the fact that the selected jurisdictions treat them differently.
While there is no clear solution to this problem, policymakers might consider a synthetic approach, which would allow the court some degree of discretion. For example, where registered designs are generally considered a technical type of IP right and thus subject to specialization in less complex cases, such cases could be allocated to simplified or small claims procedures (see Chapter 3).
Value of the claim
The value of the claim may have an impact on the jurisdiction of an IP court.
In England and Wales, the jurisdiction of the IPEC over any type of IP dispute is generally limited to claims the value of which is less than GBP 500,000, but parties may override this by joint decision (CPR 63.17A(3)).
In Germany, for copyright and related rights, Landesgerichte are competent if the claim value exceeds EUR 5,000. If the claim is less than EUR 5,000, the jurisdiction falls under the Amtsgerichte.
In the United States of America, the CCB provides a streamlined, voluntary alternative to the Federal Court for the resolution of certain copyright disputes of up to USD 30,000 (i.e., small claims).
The jurisdiction of the Philippines' Bureau of Legal Affairs over administrative complaints for violations of laws involving IP rights can be established only if the total damages claimed are not less than PHP 200,000.
Because the examples are relatively few, we might remain cautious in identifying patterns or inferring generalized rationales. Policy in England and Wales, for example, seems to reflect an intention that the IPEC act as an accessible and effective IP court for smaller claims, applying a streamlined and simplified procedure. Policy in Germany and the United States of America, meanwhile, appears to center the needs of individual litigants or SMEs.
Interaction with quasi-judicial bodies (including appeal boards in IP offices)
Analysis of quasi-judicial bodies in the selected jurisdictions suggests that policymakers may need to take into account two key issues when considering establishing such bodies.
First, the institutional setting of quasi-judicial bodies is significant. Where bodies dealing with appeals against the decisions of national IP offices are created, they are often incorporated within the offices themselves. Where no such body exists, appeals typically lie to a specialized court or, in some jurisdictions, to a generalist civil court. This is usually an appellate court, although the position may be more nuanced in common law systems. Opposition proceedings are handled within the IP offices.
Second, quasi-judicial bodies established outside of IP offices perform multiple functions. In some jurisdictions, they are established to hear appeals of the decisions of national IP offices (e.g., the Appointed Persons in England and Wales). In addition, these bodies frequently handle disputes relating to CMOs and tariff-setting, because such proceedings should be timely and cost-effective, and need a more informal, specialized forum.
Bifurcation
Bifurcation is traditionally used in civil law systems in which the grant of a registered IP right is treated as an administrative matter and, as such, requires recourse in administrative law.
Unfortunately, bifurcation may also have unintended effects: bifurcated systems can result in “procedural delays, contrasting judgments and increased costs for the parties involved”.
The main challenge for a bifurcated system therefore lies in ensuring that separating jurisdiction over validity from that over infringement does not delay proceedings.
Bifurcation of the IP judiciary exists in Brazil and Germany.
In Brazil, validity disputes are heard by the federal courts, while infringement cases are heard by the state courts. The reason for bifurcation seems to be that validity disputes involve the national IP office and thus rationae personae federal jurisdiction is appropriate.
In Germany, bifurcation is absolute and infringement courts do not decide on validity. The infringement court does, however, have discretion to stay infringement proceedings in view of a pending nullity action before the BPG or an opposition proceeding pending before the German DPMA or the European Patent Office. Defendants will commonly start nullity proceedings with their statement of defense so as to request the stay of infringement proceedings.
Some other forms of limited bifurcation exist in other jurisdictions.
In Japan, invalidity claims can be started only before the Japanese Patent Office (JPO), but the infringement court will still accept the invalidity defense.
In the United States of America, invalidity is an available defense in infringement proceedings, but petitioners can also file nullity claims at the Patent and Trademark Office of the United States of America (USPTO) in the inter partes review. The trial court can stay proceedings if it considers that the review might lead to a swifter conclusion. It also has the discretion not to stay proceedings and may proceed to rule on validity.
As to the reasons for bifurcation, they differ between jurisdictions and may be specific to a jurisdiction's judicial system.
In Brazil, bifurcation exists because only the Federal Court can deal with a dispute involving a public federal body, such as the Instituto Nacional da Propriedade Industrial [National Institute of Intellectual Property] (INPI).
In Germany, BPG was established in response to a decision issued by the Bundesverwaltungsgericht [Federal Administrative Court] (BVerwG) concerning the role of the boards of appeal at the German DPMA.
One advantage of bifurcation is that it can be an effective way of securing additional expertise. A specialized court dealing exclusively with validity disputes may employ technically qualified judges, while only legally qualified judges can usually be recruited to specialized IP divisions or chambers at the infringement courts. This advantage is not unique, however, and technical expertise can be ensured through other means, such as technical advisors or additional invalidation pathways. For example, the inter partes review in the United States of America allows members of the public to file for the invalidation of a patent before the Patent Trial and Appeal Board, and obtain a ruling on patent validity by a technically specialized body within a non-bifurcated system. When considering the benefits of bifurcation, then, a policymaker must also consider how to raise litigants' awareness of and improve litigants' access to the invalidation route.