This chapter outlines some further considerations relevant to policymakers deciding whether to introduce specialized IP judicial and procedural arrangements into a particular jurisdiction.
When considering the options available, it is important to:
identify clearly the specific reasons for introducing specialized solutions in the adjudication of IP disputes;
focus special attention on the types of IP right to which specialized solutions are to be applied;
tailor any such solutions to fit the needs of the parties involved (e.g., litigants, judges and, more broadly, the relevant industries and the general public);
ensure that the form of IP adjudication adopted secures the more effective adjudication of IP disputes.
4.1 Specific reasons for specialization
Among the jurisdictions selected for this study are those that demonstrate a wide variety of specialized approaches to IP disputes, including IP-specific courts, and others that have not introduced such specialization. This implies that specialized solutions are adopted for specific reasons and this report has identified several examples of such reasons.
When considering judicial reform, policymakers should first assess the reasons arising in their own jurisdiction, and then consider whether and how the existing structures and resources available might be used to respond effectively.
Policymakers will consider specialized solutions only where the issues arising cannot be sufficiently addressed within existing frameworks.
4.2 Types of intellectual property right
If policymakers identify a need for IP judicial specialization, they must also consider what types of IP right warrant special attention. The optimal judicial structure will differ depending on the IP right on which it is to focus.
This study has evidenced that, on the one hand, the technical nature of certain IP rights – especially patents and utility models, as well as (potentially) semiconductor rights and (in some cases) designs – justifies the degree of specialization that leads a jurisdiction to:
establish stand-alone IP courts;
employ technically qualified judges; or
concentrate IP cases among a limited number of designated courts.
On the other hand, cases relating to some types of IP right, such as low-value copyright disputes, are heard in a more informal, low-cost setting.
4.3 Needs of litigants and other parties
Territorial needs of litigants
The territorial needs of litigants is another policy consideration that emerges in this study. Specialized IP dispute solutions may be concentrated in geographical areas where IP litigation is more commonplace than it is elsewhere. In all of the jurisdictions that opted for such concentration, IP cases were heard in larger urban centers – especially capital cities and industrial hubs.
In this way, jurisdictions are able to focus their resources.
They can consolidate judicial expertise, enabling members of the courts to develop familiarity with recurring IP issues and repeat litigants, which supports a more predictable, coherent and consistent jurisprudence.
They can more cost-effectively build IP-specific technical infrastructure, deliver technical training and employ technical support staff.
However, excessive concentration may hinder SMEs based elsewhere in a jurisdiction. Such litigants – and other parties – may lack the capacity to pursue their cases far from their base of operations.
Subject-specific needs of litigants and other parties
Among the jurisdictions selected, certain specialized solutions can be identified that target very specific types of dispute or a very specific purpose. For example, the Costa Rican Tribunal Agrario [Agrarian Tribunal] deals only with disputes related to agriculture, including plant variety disputes.
Numerous jurisdictions have created copyright tribunals to facilitate disputes concerning copyright licensing and collecting societies.
Others have established forums centering the needs of specific litigants. In England and Wales, for example, the IPEC was established to help SMEs to access less costly and time-consuming litigation.
These examples show that specialized judicial arrangements can be tailored to meet the needs of a very specific type of litigant or other party, including needs based on their socioeconomic profile.
4.4 Effective litigation of intellectual property disputes
The most common reason among the selected jurisdictions for establishing first-instance specialized courts can be identified as the pursuit of more effective litigation of IP disputes.
In England and Wales, this is achieved by means of a specialized stand-alone IP court – namely, the IPEC – and the Patents Court, which is designed to provide a less time-consuming and costly venue for those litigating IP rights.
In the Philippines, certain Special Commercial Courts have been designated “in the interest of an efficient administration of justice and to ensure speedy disposition of cases involving [the] violation of [IP rights]”.
Procedural efficiency
Many jurisdictions introduce specialized front-loaded procedures to ensure the effective conduct of proceedings, especially in the most technical cases. In this context, specialization is deployed not only to enhance substantive legal expertise but also as a managerial strategy to improve case flow and reduce backlogs.
Procedural innovations associated with specialization, such as stricter case management or dedicated trial dates, can further enhance judicial efficiency.
Consistency of jurisprudence
The United States of America – the single jurisdiction among those selected in which a specialized IP trial court exists at the appeal level only – introduced the CAFC to secure uniformity across patent law jurisprudence.
Specialized judiciary at the appeal level will not necessarily support more streamlined procedures and effective case management, but it may prove an effective tool with which to ensure greater consistency at the first-instance level.