Adjudicating Intellectual Property Disputes

Adjudicating Intellectual Property Disputes: An ICC Report

Introduction

• The report, published by the International Chamber of Commerce (ICC), delves into the mechanisms for adjudicating intellectual property (IP) disputes within specialized IP jurisdictions (SIPJs) across the globe. It highlights the increasing importance of these jurisdictions in resolving complex IP matters.

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• ©2016, International Chamber of Commerce (ICC).

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Contents

• Preface: Stresses the critical role of IP in fostering innovation, facilitating cross-border trade, and driving economic development. It underscores the ICC's commitment to improving IP-related dispute settlement mechanisms.

• Acknowledgements: Lists the members of the Commission on Intellectual Property’s task force who contributed to the report.

• Introduction:

  • Provides background on the growing significance of IP rights, the surge in IP applications, and the escalating number of IP disputes worldwide.

  • States the report's aims and objectives, which include assisting countries in establishing new SIPJs or enhancing the efficiency and expertise of existing ones.

• Different aspects of specialised IP jurisdictions:

  • Discusses the existence and rationale behind specialized IP jurisdictions, highlighting their importance in resolving IP disputes.

  • Examines the structure and competence of existing specialized courts and jurisdictions.

  • Analyzes the roles of judges, juries, and experts in SIPJs, focusing on their contributions to the adjudication process.

  • Explores the procedures, legal doctrines, and rules of evidence applied in SIPJs, emphasizing their impact on dispute resolution.

  • Addresses the representation of parties before SIPJs, including qualifications and standards for legal representatives.

  • Investigates the execution of judgments rendered by SIPJs, covering enforcement mechanisms and challenges.

• Conclusions: Summarizes the key findings of the study and their implications for countries considering the establishment or improvement of SIPJs. It offers insights into best practices and emerging trends in IP dispute resolution.

Preface

• The ICC emphasizes the importance of intellectual property (IP) for innovation, cross-border trade, and economic development, viewing IP as a fundamental driver of economic growth and global competitiveness.

• The increasing utilization of the IP system by businesses worldwide validates the ICC's conviction in the strategic value of IP assets.

• The rise in IP disputes necessitates the development of efficient and effective resolution mechanisms to safeguard IP rights and promote innovation.

• The ICC actively supports initiatives aimed at enhancing IP-related dispute settlement mechanisms at both national and international levels.

• The report offers insights into the functioning of specialized IP jurisdictions (SIPJs) from the perspectives of businesses and legal practitioners.

• It aims to provide businesses and governments with a deeper understanding of the role and impact of SIPJs in resolving IP disputes.

• Serves as a valuable resource for countries seeking to establish or improve their systems for resolving IP disputes, offering practical guidance and best practices.

Acknowledgements

• The report acknowledges the contributions of members of the Commission on Intellectual Property’s task force on Specialised Intellectual Property Jurisdictions and other contributors who provided expertise and insights.

Introduction

• The importance of intellectual property rights to businesses has grown in parallel with the expansion of the global innovative economy, reflecting the increasing value of intangible assets in the modern marketplace.

• In 2014, patent applications worldwide increased by $4.5\%$ to approximately $2.7$ million, while trademark applications surged to around $7.44$ million, representing a growth rate of $6\%$.

• The number of new first instance IP-related lawsuits in China reached $116,528$ in 2014, indicating a significant increase of $15.6\%$ over the previous year and underscoring the growing complexity of IP enforcement.

• The escalating number of IP disputes has prompted increased reflection on the efficiency, impartiality, and predictability of court trials for IP disputes, leading to calls for specialized adjudication mechanisms.

• Specialized IP jurisdictions (SIPJs) have emerged as a response to these challenges, aiming to enhance judicial specialization, promote consistency in decisions, and minimize judicial errors in IP cases.

• The structure and scope of SIPJs vary across different countries, reflecting diverse legal traditions, economic priorities, and institutional frameworks.

• The report aims to assist countries in enhancing overall efficiency and expertise in IP-related trials by providing insights into the organization and operation of SIPJs.

• It offers an overview of the structures and trial procedures of SIPJs in various jurisdictions, drawing on empirical data and comparative analysis.

• The report builds upon prior work conducted by organizations such as the International Bar Association, the US Patent and Trademark Office, and the International Intellectual Property Institute, contributing to a broader understanding of SIPJs.

• A specialized IP jurisdiction is defined as a tribunal or court, or a permanent division or chamber within a civil or commercial court or administrative body, possessing exclusive authority to adjudicate IP disputes or specific types of IP disputes.

• The report focuses on contentious proceedings related to IP infringements and the invalidation of registered IPRs, excluding non-contentious matters.

• It does not address proceedings pertaining to the registration of IPRs or tribunals specializing in the valuation of remunerative IPRs, such as copyright royalty tribunals.

Methodology

• The report is based on a comprehensive survey of ICC members from 24 countries spanning Europe, Asia, and North, Central and South America, ensuring a global perspective.

• The respondents consist of attorneys and IP practitioners with extensive litigation experience and expertise in IP law, providing valuable insights from the field.

• The survey was designed to ascertain whether a country has an SIPJ and to gather detailed information on various SIPJ-related issues, ranging from the rationale behind their establishment to their structures and trial processes.

• Particular emphasis was placed on understanding the standing and qualifications of representatives of parties in SIPJs and the selection criteria for judges in these specialized courts.

• The report was meticulously prepared through an analysis of the survey data, supplemented by additional insights from contributors to the project, ensuring a rigorous and evidence-based approach.

• It underwent thorough review by the ICC Commission on Intellectual Property and the broader ICC membership, enhancing its credibility and relevance to stakeholders.

• The report not only presents a snapshot of the current status of SIPJs in the surveyed countries but also includes commentary and conclusions, offering actionable recommendations for policymakers and practitioners.

Different Aspects of Specialised IP Jurisdictions

Existence and rationale for specialised IP jurisdictions

• Among the 24 countries surveyed, 19 have established SIPJs: Belgium, Brazil, Chile, China, France, Germany, India, Japan, the Republic of Korea, Mexico, Peru, Portugal, Russia, Spain, Sweden, Switzerland, Thailand, the United Kingdom, and the United States, demonstrating widespread recognition of the need for specialized IP adjudication.

• SIPJs may be designated by various names, even though they serve the same fundamental purpose and strive to achieve similar objectives, reflecting differences in legal terminology and institutional arrangements.

• Examples include the IP High Court in Japan, the Federal Patent Court in Switzerland and Germany, the Patent Court in the Republic of Korea, the Court for Intellectual Rights (IP Court) in Russia, the Intellectual Property Court(s) in China and Portugal, the Central Intellectual Property and International Trade Court in Thailand, the Specialised Chamber of IP Matters of the Federal Court for Tax and Administrative Affairs in Mexico, and the Specialised Court Chambers in France, showcasing the diversity of SIPJ models worldwide.

• Primary motivations cited for the establishment of SIPJs:

  • Develop IP expertise in specialized judges: Enhancing the knowledge and skills of judges in IP law and technology to ensure informed decision-making.

  • Unify court practice with respect to IP cases: Promoting consistency in legal interpretation and procedural rules to streamline IP litigation.

  • Improve the consistency of court judgments and the predictability of litigation outcomes: Reducing uncertainty and enhancing confidence in the legal system