08 May 2016

ICC on specialised IP jurisdictions

The International Commerce Commission (ICC) has released a report on Adjudicating Intellectual Property Disputes: An ICC report on specialised IP jurisdictions worldwide.

The report comments
Along with the rapid progress of the global innovative economy, the importance of intellectual property rights to businesses has grown and the number of intellectual property (IP) applications and registrations has been increasing dramatically each year. In 2014, patent applications worldwide grew by 4.5% to around 2.7 million, and trademark applications rose to around 7.44 million, with a growth of 6% (compared to 2013). Concurrently, more filings of IP rights in recent years have also resulted in more disputes related to IP. In China alone, the number of new first instance IP-related lawsuits in 2014 came to 116,528, marking a 15.6% increase over the previous year. More IP-related lawsuits have not only raised public awareness of the importance of IP enforcement, but have also led to increased reflection concerning the efficiency, impartiality and predictability of court trials for IP disputes. 
These developments have led some countries to establish — or to consider establishing — specialised IP jurisdictions (SIPJs) for resolving IP-related disputes.
A SIPJ is broadly defined as
as a tribunal or court, or a permanent division or a chamber within a civil or commercial court or administrative body, having exclusive authority to hear IP disputes or a particular kind of IP dispute. The report focuses on contentious proceedings relating to IP infringements and the invalidation of registered IPRs; it does not deal with proceedings relating to the registration of IPRs or tribunals focused on the valuation of remunerative IPRs, such as copyright royalty tribunals.
The report states
Although created in the context of diverse legal, economic, cultural and historical frameworks, SIPJs have often been established in different countries for similar reasons — to increase judicial specialisation in IP-related issues, promote consistency and predictability in trials and case outcomes, and reduce the risk of judicial error — even if with local nuances. 
However, the form that SIPJs take and the scope of their competence can vary widely from country to country. Some are empowered to try both administrative and civil IP disputes, such as China, Japan and Russia, while others may be purely civil or administrative. Some are established as separate judiciary institutions, totally independent of civil and administrative courts, and others are structured as a chamber or tribunal within a civil or commercial court. The modes of trial practiced by SIPJs also differ to some extent.
The ICC states that it has
prepared the present study to assist countries in their consideration of whether, and how, to establish or improve SIPJs so as to enhance overall efficiency and expertise in IP-related trials. The report provides an overview of the structures and trial procedures of SIPJs in various jurisdictions around the world, with a view to contributing to a better understanding of the current landscape of SIPJs and the way they function. It is intended to build on and complement work already done by the International Bar Association, and by the US Patent and Trademark Office and the International Intellectual Property Institute in this area by exploring more specific issues related to the functioning of SIPJs. 
 The report was based
on a survey of ICC members which aimed to obtain first-hand information from parties and practitioners on the litigation mechanisms in their countries for trying IP disputes. The respondents are all attorneys or IP practitioners with hands-on litigation experience and expertise in IP. Altogether, information was obtained from a diverse group of 24 countries from Europe, Asia, and North, Central and South America. The survey was designed to first determine if a country had an SIPJ and, if so, to collect information on various SIPJ-related issues, from the rationale behind the establishment of SIPJs to their structures and the speci cs of the trial process. Among the issues surveyed, particular attention was paid to the standing and qualification of representatives of parties in the SIPJs and the selection of judges for SIPJs.
The ICC's conclusions are -
... a significant number of countries around the world have established SIPJs that are very diverse. This diversity can especially be seen in their different structures and in their mechanisms in relation to the appointment of judges and experts and the representation of parties. The same basic principles are however applied across the different countries surveyed, e.g. in relation to expedited proceedings and legal doctrines.
Based on the information obtained, this study draws the following conclusions, which could assist countries in their consideration of whether, and how, to establish or improve SIPJs.
 SIPJs can improve the efficiency and quality of IP-related litigation processes and outcomes
A large majority of the countries surveyed for this study has established SIPJs in various forms, and the respondents from most of the countries that have not established them believe it would be desirable to do so.
Some of the specific reasons expressed by respondents in different countries as to why SIPJs are established include:
  • “...to develop IP expertise in specialised judges, and unify standards of trials”,
  • “to develop IP expertise in specialised judges; and to streamline the jurisdiction of national courts over intellectual property matters with a view to simplifying proceedings”, 
  • “to develop IP expertise in courts, and for parties’ convenience” and 
  • “creation of subject matter experts/expertise; effectiveness of the decision; enhance efficiency and accuracy; consistency and predictability of case outcomes”.
All of these clearly indicate that SIPJs are seen to increase the effectiveness of enforcement of IPRs and are welcomed by practitioners and litigants in the surveyed countries.
The contribution of SIPJs to developing IP expertise in courts, unifying standards of trials, enhancing the efficiency and accuracy of trials and ensuring the predictability of case outcomes thus argues in favour of their establishment and maintenance.
 The need for and the most appropriate form of SIPJs depend on individual country needs and circumstances
Despite the largely coincident reasons motivating di erent countries to establish SIPJs — as described above — the choice of form for SIPJs often varies according to the different national legal cultures, economic contexts and priorities. Where IP disputes are numerous and technically complicated, SIPJs may have a more elaborate structure and larger dedicated sta (e.g. a separate court with experienced judges). Where a country’s economic and legal environment suggests little demand for an SIPJ, it can be concluded that such a solution is not beneficial. Likewise, if civil or commercial courts are able to handle IP disputes effectively on their own, SIPJs may not be an urgent priority. The need for and design of SIPJs should emerge from actual social, economic and legal needs — as is the case in most countries.
China, for example, is a vast country with a huge number of IP-related disputes, requiring a large number of judges versed in IP. Nevertheless, the training of judges to meet this demand is a tremendous task; even if the judges are qualified for the job, different judges with distinct educational backgrounds and experience may have different views on similar legal or factual issues. Consequently, unifying IP trials, especially in respect of cases involving complex technological issues, was a fundamental consideration for establishing SIPJs in China. SIPJs could therefore be helpful for those countries with a large territory or population — and, therefore, usually with more courts — if they have sufficient IP disputes.
In short, if the aim of an SIPJ is to increase the efficiency and quality of IP-related dispute resolution, and thus to meet the needs of the national economy, it should only be established if it adequately serves these goals and should be designed in the most appropriate way to fulfil them.
Proper trial mechanisms and judicial expertise are essential
Where there is a need for SIPJs, the overall mechanism of the SIPJ (i.e. the procedures and personnel arrangements) is very important for the way IP cases are decided. It is advisable that SIPJs be staffed with knowledgeable judges and, especially for patent cases, be structured so as to enable the court to understand the technical issues in dispute — which are often complex — whether by involving judges with a certain technical background, technical experts (as court or party appointed experts) and/or IP practitioners or other specialists. This was particularly highlighted by respondents to the survey.
The appropriate mechanism for any particular SIPJ will again be influenced by the judicial system, legal tradition and ideology, and socio-economic context.
Based upon the analysis of the survey results, ICC concludes on balance that SIPJs present an advantage in the current economic and legal environment worldwide in jurisdictions where there is a suffcient body of IP litigation and can, in many circumstances, enhance the efficiency of IP enforcement.
The structure and mechanisms of SIPJs should be designed in response to the specific context of the country, and with the aim of developing IP expertise in the judiciary, unifying trial standards and practices, enhancing efficiency in trials and ensuring the predictability and accuracy of case outcomes.
ICC recommends that countries should consider establishing and adopting some form of SIPJs, or improving existing SIPJs, according to their respective economic and legal situations, and hopes that the present study will assist in this reflection.