This concluding chapter draws on the analysis explored in this report to offer some key principles and questions on which policymakers can reflect when considering reforming the judicial administration of IP disputes in their jurisdiction.
Both the key principles and the key questions that follow are derived from the findings set out in this report. As such, they reflect practices established in a specific factual and legal context, and they are not to be understood as directly applicable to other legal systems. Nevertheless, they are intended as prompts for policymakers introducing judicial reform, helping them to make informed decisions, to reduce the costs of transition and to get the best possible results.
Key principles
A. Judicial reform is a response to a specific need
Specialized approaches to the judicial administration of IP disputes should respond to specific needs. Where empirical evidence suggests that the jurisdiction deals with relatively few IP cases, policymakers might reasonably decide not to reform the judiciary at all.
B. Judicial structures generally develop organically
In most of the jurisdictions selected for this study, an IP judiciary has developed organically in response to demand.
Stand-alone IP courts, or relatively independent specialized divisions or chambers, have been set up in jurisdictions with well-established judiciaries (e.g., England and Wales, Japan) and/or for the most technical disputes only, such as those relating to the validity of patents (e.g., Germany).
Most of the selected jurisdictions have established specialized divisions or chambers rather than stand-alone courts – most likely because the former can emerge from self-governing mechanisms, while the latter have a statutory basis, which means that the former allow for more flexibility.
At the same time, specialized divisions or chambers may be granted sufficient organizational and procedural independence from the court to which they are nominally attached to maximize the impact of specialization.
C. Reform respects local customs and judicial traditions
When designing specialized IP judiciaries, policymakers should demonstrate respect for local customs and legal traditions.
In some of the selected jurisdictions (e.g., France), cases have traditionally been considered by collegial panels; in others (e.g., England and Wales, the United States of America), they have been heard by single judges.
For this reason, it may not always be practicable to implement in one jurisdiction with a specific local judicial tradition a solution developed in another.
D. Reform is focused on procedural and organizational specifics
The analysis undertaken in this report indicates that the distinction between stand-alone courts and IP divisions or chambers is not clear-cut.
For this reason, policymakers engaging in judicial reform might not debate issues such as the name(s) of the new structure(s) but rather center specific structural choices, 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).
E. Solutions are tailored to meet local needs
Among the jurisdictions selected for this study, solutions such as specialized IP divisions or chambers have evidently been established for multiple reasons.
It is therefore important to tailor any specialized solution for the judicial administration of IP disputes to meet specific local needs.
F. Solutions function effectively within holistic (systemic) contexts
Any specialized IP judicial structure or judiciary should not automatically be treated as a single, discrete system, with distinct infrastructure, procedures, etc. Policymakers should instead adopt a holistic perspective, considering how such solutions will function effectively within the existing systemic context.
Key questions
1. Is there good reason for judicial reform in relation to IP disputes?
There should always be good reason for reforming the judicial administration of IP disputes in any given jurisdiction, for example:
IP rights owners are unwilling to litigate because of concerns that proceedings would be costly and time-consuming;
the courts are increasingly burdened by their IP caseload;
decisions in IP disputes are conflicting; and
judges are reluctant to hear IP disputes because they perceive them to be too complex.
2. Might these needs be met through existing structures?
Before introducing new specialized IP judicial solutions, assess whether the issues arising can be resolved by means of a de minimis modification of the existing judicial structure.
For example, where the issue is one of limited technical expertise, a jurisdiction's existing courts might benefit from the introduction of technical advisors or judicial training programs; where ordinary proceedings are too costly and time-consuming for individual litigants and SMEs, policymakers might add a small claims track to existing court procedures.
3. Which might be the most appropriate judicial structure(s)?
If a de minimis approach is inadequate and there is a good reason for specialization, consider which one or more of the following options might best meet the need(s) arising in context.
A stand-alone court. Among the jurisdictions selected for this study, stand-alone IP courts have been established for technical cases only or to deal with narrowly defined types of dispute.
Specialized IP divisions or chambers. The most commonplace arrangement among the jurisdictions selected, specialized IP divisions or chambers were found to be both a flexible solution (i.e., responsive to changing needs) and easier to establish than a stand-alone court, depending on the national context.
Specialized divisions or chambers may nevertheless be vested with relativeindependence in terms of the allocation of judges and docketing of cases (seeChapter 1, “Specialized IP divisions or chambers and concentration of cases”).
Concentrated jurisdiction. Another approach that may be appropriate if the goal is to distribute resources more efficiently is to concentrate jurisdiction by allocating IP disputes to only a few designated courts, which will usually establish specialized IP divisions or chambers.
A less formal approach to the concentration of jurisdiction that tackles issues of technical expertise is the allocation of certain types of dispute to a few designated judges (see Chapter 2, “Judges”).
One note of caution here, however, is to assess the likely impact of any such solution on litigants' access to justice – especially that of individual litigants and SMEs based outside of capital cities and other regional hubs (see Chapter 1, “Territorial considerations”).
First instance vs. appellate levels. Among the jurisdictions selected for this study, specialization at first instance has proven the most appropriate approach when the issue is one of timely and cost-effective litigation; specializing at the appellate level has been proven to be effective where the intention is to achieve more uniform jurisprudence (see Chapter 1, “Specialization at first, appellate or final instances”).
Dispute-specific quasi-judicial body. In some instances, jurisdictions have established quasi-judicial bodies outside of the court system to deal with certain specific types of dispute, such as tariff setting or licensing in relation to copyright, or to deal with appeals from the national IP office (see Chapter 1, “Quasi-judicial bodies outside of IP offices”). The policy reasons for such a choice include the accessibility and efficiency of proceedings, as well as the need for a less formal setting. All of the jurisdictions selected for this study were found to have adopted a blended approach combining some – or, in one case (namely, Japan), all – of these judicial structures (see Chapter 1, “Alternative and blended approaches”).
4. What is the material scope of the jurisdiction sought?
Technical vs. nontechnical IP rights. Technical IP rights are often subject to a higher degree of specialization to ensure that those hearing a dispute have, or have access to, relevant technical expertise. Such specialization may take the form of a specialized stand-alone IP court, or specialized divisions or chambers, the involvement of technically qualified judges or technical advisors, or specialized rules of procedure. Nontechnical IP rights may require a different form of specialization, such as a less formal small claims procedure (see Chapter 3, “Simplified or small claims procedures”).
Commercial disputes. Including IP cases within the commercial law framework may increase procedural efficiency and allow litigants to benefit from existing commercial expertise among the judiciary. The issue here, however, is one of legal expertise: judges who focus on commercial law may lack familiarity with the doctrines relevant to IP law (see Chapter 1, “General civil or commercial courts”).
5. Should the value of the claim be a contributory factor?
Monetary thresholds for jurisdiction in specialized courts are rare among the selected jurisdictions. However, the value of the claim is a relevant factor when determining jurisdiction of quasi-judicial bodies dealing with specific types of disputes, as well as when assessing eligibility for simplified or small claims procedures (Chapter 3, “Simplified or small claims procedures”). In addition, within a complex specialized judicial structure, the value of the claim may help delineate the jurisdiction of different specialized IP divisions or chambers.
6. Should jurisdiction be bifurcated?
There was no unequivocal evidence that bifurcation of jurisdiction over validity and infringement of IP rights is necessary when the need arising is one of greater technical expertise. Indeed, considerable technical specialization was evident among nonbifurcated jurisdictions and, in practice, bifurcation was often the result of judicial tradition or the federal character of IP rights (see Chapter 1, “Bifurcation”).
7. What territorial concerns are relevant?
In general, specialized stand-alone IP courts, specialized divisions or chambers, or a concentration of jurisdiction had been established where demand for litigation was highest (e.g., in capital cities and other industrial hubs) rather than being evenly distributed across a jurisdiction's territory.
Nevertheless, some jurisdictions tackle issues of access to justice by maintaining these structures in a few locations where litigation is less intense and others have introduced iudex ambulans solutions (see Chapter 1, “Territorial considerations”).
8. What will be the selection criteria when appointing judges and technical advisors?
Legally qualified judges. None of the jurisdictions selected for the study had well-established formal selection criteria for judges hearing IP disputes. Jurisdictions generally either identified specialist knowledge and experience at the recruitment stage, delivered specialist training to generalist judges or appeared to rely on a specialist skill set developing as a consequence of a regular IP caseload (see Chapter 2, “Judges”).
Technically qualified judges. Technically qualified judges are not a common phenomenon and were found only among those of the selected jurisdictions that had established stand-alone IP courts (see Chapter 2, "Specialized qualifications”).
Technical advisors. Some jurisdictions achieved specialization among members of the court by other means, such as through the use of technical advisors or judicial research assistants. Such personnel deliver neutral advice to help the court to understand the technical details of the case (see Chapter 2, "Technical advisors”).
9. In what ways might judicial procedures be tailored to suit IP disputes?
Sources of law. Specialized judicial procedures have been introduced among the selected jurisdictions comprehensively through secondary legislation and otherwise by means of the rules adopted by courts or other statutorily authorized bodies. More incidental matters, such as grounds for remedies, as well as provisional and evidentiary measures, are generally provided for under statute (see Chapter 3, "Sources of procedural law”).
Ratio legis of specialized procedures. Some jurisdictions among those selected have introduced a more streamlined, front-loaded procedure that demands the court play an active role in managing complex, technical cases – especially patents. In addition, where policymakers have faced complaints that litigation is too time-consuming or costly, specialized procedures can be simplified and informal, to better accommodate individual litigants and SMEs (see Chapter 3, "Simplified or small claims procedures”). In relation to their most complex cases, some jurisdictions have introduced specialized case management rules. These may be helpful in complex, highly technical cases, such as those involving patents, to support claim construction (see Chapter 3, "Case management”).