3 Rules of procedure for intellectual property disputes

In Japan, the IP divisions of the Tokyo and Osaka District Courts have published several guidelines for the patent infringement lawsuit process, and the Intellectual Property High Court has guides on the procedure for appealing decisions of the Trial and Appeal Department (TAD).

In the United States of America, some district courts have introduced local rules relating to patents.

The German PatG and MarkenG introduce special rules of procedure before the BPG, with only supplementary application of the German Zivilprozessordnung [Rules of Civil Procedure] (ZPO).

In the Philippines, the Preamble to the 2020 Revised Rules of Procedure for Intellectual Property Rights Cases refers to the constitutional protection of “the exclusive rights of scientists, inventors, artists, and other gifted citizens to their intellectual property and creations”. ⁽⁹⁾See n. 4. Section 2 of the Philippines' Intellectual Property Code recognizes the role of IP rights in “the development of domestic and creative activity”. ⁽¹⁰⁾See Intellectual Property Code of the Philippines, Republic Act No. 8293 of June 6, 1997. Available at www.officialgazette.gov.ph/1997/06/06/republic-act-no-8293/

Legislators in England and Wales, as well as Singapore, introduced simplified IP procedures because of concerns that the high costs of IP litigation have a particular adverse effect on SMEs.

In the United States of America, specialized IP procedures established by certain district courts for patent claims (the so-called patent local rules) are intended to ensure more straightforward and consistent practices (e.g., by streamlining discovery, requiring parties to disclose and narrowing contentions).

The special procedure applicable to proceedings before the German BPG is the result of a hybrid institutional design adopted by the German legislator. Historically, appeals against the decisions of the Patent Office went to the BVerwG; when the BPG was created, it was decided that it would be a special court remaining outside of the administrative court structure. Nevertheless, its special procedure requires supplementary application of the general civil procedure and some administrative elements were also maintained. For example, in contrast to a civil trial court subject to the principle of adversarial procedure, the BPG investigates ex officio to reach its conclusion and its decisions are binding erga omnes.

The United States of America established specialized processes under its Drug Price Competition and Patent Term Restoration Act of 1984 (Hatch-Waxman Act), which governs marketing approval of generic small-molecule drugs and competition between generic drug manufacturers.

With its Patented Medicines (Notice of Compliance) Regulations, Canada introduced a special procedure for complex pharmaceutical cases that is often also applied to other complex IP-related proceedings. ⁽¹¹⁾See Patented Medicines (Notice of Compliance) Regulations (SOR/93-133), amended up to January 1, 2025, Canada. The procedure contains strict rules in terms of timing of pleadings and requisitioning of case management conferences, making case management effectively mandatory. ⁽¹²⁾See Federal Court (Canada) (2025). Case and Trial Management Guidelines for Complex Proceedings, Proceedings under the PM(NOC) Regulations, and Appeals under Subsection 56(1) of the Trademarks Act. June 2026, at 12-13. Available at www.fct-cf.ca/Content/assets/pdf/base/2025-07-18-Case-and-Trial-Management-Guidelines.pdf Case management allows the judge to:

• give directions or make orders for a just, expeditious and inexpensive determination of the proceeding on its merits;

• fix the period for completion of the procedural steps;

• fix the dates of and conduct dispute resolution or pretrial conferences;

• hear and determine motions; and

• order status review, where appropriate. ⁽¹³⁾See Federal Courts Rules, rr. 50(1), 380 and 383–385. Available at https://laws-lois.justice.gc.ca/eng/regulations/sor-98-106/FullText.html

• the production of evidence;

• case management; and

• simplified or small claims procedures.

In Brazil, while the rules on production of evidence will usually follow the general civil procedure, the defendant may argue nullity at any time during patent litigation. Additionally, in cases involving the INPI concerning the validity of an IP right, the court receives the answer from the defendant first; in the general civil procedure, all parties must respond at the same time.

In Costa Rica, article 39 of the Ley de Procedimientos de Observancia de los Derechos de Propiedad Intelectual [Law on Procedures for Enforcement of Intellectual Property Rights] states that, in IP disputes where relevant evidence is under the control of the opposing party, the court may order the party to present it. ⁽¹⁴⁾See n. 12.

In Japan, article 220 of the Code of Civil Procedure stipulates a list of specific situations in which a person may not refuse to submit a document requested by the other party. ⁽¹⁵⁾See Code of Civil Procedure (Act No. 109 of June 26, 1996, as amended up to Act No. 48 of May 25, 2022), Japan [in Japanese]. See also World Intellectual Property Organization (WIPO) (2025). An International Guide to Patent Case Management for Judges. (Patent Judicial Guide) Geneva: WIPO , at section 7.6.5.1.2, for a discussion on the determination of reasonable grounds. The law is different for IP proceedings. Under article 105(1) of the Patent Act, the party may refuse to produce the documents only if it has a “legitimate reason” for doing so. ⁽¹⁶⁾See Patent Act, Act No. 121 of 1959, amended up to April 1, 2024, Japan [in Japanese]. The same applies mutatis mutandis to trademark proceedings; in relation to copyright, an equivalent provision has been introduced in the Copyright Act. ⁽¹⁷⁾See Copyright Act, Act No. 48 of 1970, amended up to July 19, 2024, Japan [in Japanese]. The lex specialis was introduced to mitigate the difficulties in proving damages that claimants would face if the general civil procedure, with its more permissive approach, were followed.

In Germany, the 10th Civil Panel of the BGH performs trial judge functions – a capacity that a civil court of final instance generally does not assume.

In Kenya, the Industrial Property Tribunal Rules provide a streamlined time frame for presentation of evidence. ⁽¹⁸⁾See n. 2.

In the Philippines, robust regulation of the collection of evidence was established by the 2020 Revised Rules of Procedure for Intellectual Property Rights Cases. ⁽¹⁹⁾See n. 4. These are further discussed in the next section (see “Case management”).

In Singapore, the Intellectual Property Court Guide provides rules on expert evidence, experiments, provision of samples and site visits. ⁽²⁰⁾See Supreme Court of the Republic of Singapore (2013). The Intellectual Property Court Guide. Registrar's Circular No. 2 of 2013, September 6. Available at www.judiciary.gov.sg/docs/default-source/circulars/2013/registrar's_circular_no_2_2013_supreme_courts.pdf

In Canada, the presumption of validity applies to patents, trademarks and registered copyrights. Additionally, where a copyright infringer pleads a defense that they were unaware of the copyright, a registration of copyright avails the copyright owner with remedies that go beyond injunction.

The Philippines has introduced similar, separate, presumptions for other IP rights. For trademarks, the likelihood of confusion is presumed in cases involving identical signs or marks used for identical goods or services. For copyright claims, it is presumed that a copyright subsists in the work to which the action relates and ownership is presumed to belong to the claimant; authorship is presumed to rest with the person whose name is indicated on the work. Similar presumptions may be found in other jurisdictions.

In France, it is presumed that authorship resides with the person under whose name the work is divulged (art. 113-1 CPI).

In Singapore, provisions governing experts in IP cases ensure the timely exchange of preparatory information concerning expert participation. For example, within two weeks of confirming expert appointments, the parties must exchange a list of the areas on which expert evidence will be adduced, ensuring that experts are properly instructed and that the parties are aware of the scope of the proposed testimony. In addition, Singaporean regulations allow for the possibility of a caucus to facilitate discussions between experts. Any such experts' caucus must take place after all experiments and site visits have been completed, but before expert reports are prepared or, alternatively, after the initial exchange of those reports. With regard to experiments, the Intellectual Property Court Guide sets out specific rules that organize the proceedings and ensure their timely conduct. ⁽²¹⁾Ibid.

Similarly, in the Philippines, the 2020 Revised Rules of Procedure for Intellectual Property Rights Cases contain additional provisions concerning the appointment of experts and expert committees in patent infringement cases. ⁽²²⁾See n. 4.

In the United Kingdom, by contrast, any IP-specific regulation of experts is limited largely to the issue of experiments. These rules are intended to ensure that any application to conduct an experiment is made sufficiently in advance of adjudication and includes adequate detail.

In Canada, the procedure for complex pharmaceutical cases established under the Patented Medicines (Notice of Compliance) Regulations includes a mandatory case management regime. ⁽²³⁾See n. 11.

In Japan, case management in patent cases is organized through the Tokyo and Osaka District Courts' adoption of proceedings models. These models include a detailed timetable for the proceedings, divided into two stages: infringement and damages. Generally, the case will start with an oral argument. The court will then refer the case to preparatory proceedings, guided by the presiding judge and another member of the three-judge panel, in the course of which the parties will identify and organize the issues and evidence, and present their detailed arguments. Similar models have been adopted for proceedings before the Intellectual Property High Court concerning appeals from TAD decisions.

In Kenya, case management before the Industrial Property Tribunal is governed by the 2002 Industrial Property Tribunal Rules. ⁽²⁴⁾See n. 2. For example, in relation to infringement proceedings, the Rules include obligations pertaining to the statements of fact that must accompany the statutory requests, the forms that must be used for a counterstatement and the deadline for its filing (i.e., 45 days). Additionally, rule 24 governs the collection of evidence, and it establishes a time frame for submission of evidence by both the claimant and the defendant.

In the Philippines, IP-specific rules for case management were established by the 2020 Revised Rules of Procedure for Intellectual Property Rights Cases. ⁽²⁵⁾See n. 4. The specialized procedure includes a pretrial (r. 6), clarification hearing and trial (r. 7). The purpose of the pretrial is to front-load the case. The court must, with its active participation, ensure that the parties consider a set of factors, including:

• the possibility of an amicable settlement;

• the facts that need to be proven;

• the possibility of obtaining stipulations and admissions of facts and documents;

• any objections to the admissibility of evidence;

• the simplification of the issues; and

• any other matters that might aid in the speedy and summary disposition of the case.

The pretrial stage is concluded with the order of the court, which states, among other things, the admitted facts, the legal and factual issues to be tried or the evidence to be marked. Crucially, the content of the pretrial order will control the proceedings unless it is modified before the trial to prevent manifest injustice. If, at the pretrial stage, it appears that some matters are yet to be clarified, the pretrial order will include the scheduling of the clarification hearing. The Rules establish deadlines for the completion of the pretrial and clarification hearing, as well as for party submissions.

In England and Wales, case management provisions have been introduced for cases that must be started at the IPEC and the Patents Court – that is, disputes involving patents, registered designs, Crown use, semiconductor topography rights and plant varieties. According to CPR 63.8, parties in such disputes need not file a directions questionnaire, which may typically be required for proceedings discussed under the general provisions of the CPR. ⁽²⁶⁾See n. 6. A case management conference may be held at the request of the claimant after the defendant files their defense. ⁽²⁷⁾Patent Judicial Guide (n. 15), section 9.6.4.1; CPR Practice Direction 63 (n. 6), section 5.3. During the conference, the court will set out the timetable for the trial and decide on any procedural directions. ⁽²⁸⁾Patent Judicial Guide (n. 15), section 9.6.4.1.

As mentioned earlier in this chapter, certain district courts in the United States of America have adopted specialized IP procedures (so-called patent local rules) to streamline discovery – that is, to ensure that parties tailor their contentions and disclose critical documents promptly, without judicial oversight. These rules, which supplement the general civil procedure, require the parties to refine their arguments in the early stages of the litigation and to adhere to them thereafter. This is of particular importance for claim construction. Some patent local rules may provide detailed timetables providing for every action (e.g., for raising validity contentions, identifying claim terms or contending damages).

In the Philippines, administrative complaints for violations of law involving IP rights in which the total damages claimed do not exceed PHP 200,000 may be considered in a simplified procedure before the Bureau of Legal Affairs of the IPOPHL. The procedure may result in the imposition of certain interim measures or administrative penalties.

In Singapore, a simplified procedure was introduced in 2022, under the Supreme Court of Judicature (Intellectual Property) Rules, because the specialized nature of IP proceedings was a barrier for SMEs seeking to protect their rights. ⁽²⁹⁾See n. 5. The procedure applies to claims in which:

• the dispute involves an IP right;

• the monetary relief claimed by each party does not, or is not likely to, exceed SGD 500,000 or all parties agree to it; and

• the case is suitable for a simplified process.

In England and Wales, the so-called small claims track (SCT) was established before the IPEC to “benefit those claimants currently deterred by the cost of bringing such a claim within the court system”. ⁽³⁰⁾Explanatory Memorandum to the Civil Procedure (Amendment No. 2) Rules 2012 (S.I. 2012/2208), at para. 7(7.1(g)). Available at www.legislation.gov.uk/uksi/2012/2208/pdfs/uksiem_20122208_en.pdf At the time of writing, the SCT applies to unregistered designs, trademarks, copyright and certain other disputes if the value of the claims does not exceed GBP 10,000. ⁽³¹⁾https://www.gov.uk/government/publications/intellectual-property-enterprise-court-a-guide-to-small-claims/guide-to-the-intellectual-property-enterprise-court-small-claims-track Both parties must either agree, or at least not object, to the allocation of the claim to the SCT and the court can always reallocate the claim to multitrack – the only other track available for IP disputes. The SCT varies from the multitrack in several key respects:

• the recovery of costs is largely prohibited;

• interim relief cannot be obtained;

• evidentiary rules are narrower, such as the requirement for permission to rely onexpert testimony;

• preliminary hearings are uncommon; and

• any hearings that do occur are informal and directed by the judge.

One could also treat the existence of the IPEC as a sort of small claims procedure. This is because a claim can be filed with the IPEC only where it is made for damages or an account of profits and the total amount or value of the claim does not exceed GBP 500,000. When calculating the value of such a claim, any interest (other than interest payable under an agreement) and any costs should be excluded. This limit does not apply if the parties agree that the court can award damages or profits exceeding GBP 500,000.

In the United States of America, a simplified procedure is available for copyright disputes before the CCB. It applies to claims the value of which does not exceed USD 30,000. The procedure is streamlined and conducted online, and the parties are required to provide only limited basic documents and information, as opposed to the more complicated and costly process of exchanging evidence in federal lawsuits. Proceedings before the CCB do not employ the formal motion practice characteristic of federal court litigation and any hearings are conducted remotely by means of video conferencing. Additionally, the Trademark Trial and Appeal Board (TTAB) offers an accelerated case resolution process that allows the parties to agree to a streamlined, pretrial decision on the merits of inter partes disputes.