Specialized IP Courts: Recognizing Country-Specific Needs Is Complex

In light of the growing global “innovation market” and the rapid development of technologies, countries have reviewed and modernised their judicial systems to address the increase in intellectual property issues. Notably, the establishment of specialized IP courts has been a prominent feature of judicial mechanisms to resolve IP disputes.

Six member states gave presentations on their national judicial systems and experiences at this week’s World Intellectual Property Organization Advisory Committee on Enforcement (ACE), alongside the presentation of two observer reports on specialized courts and jurisdictions. The advantages and disadvantages of such courts were detailed and discussed.

The eleventh session of the ACE was held from 5-7 September. The advisory committee, a non-negotiating body, is mandated with carrying out technical assistance and coordination in the field of enforcement.

During the session, the committee set out to hold an “Exchange of information on national experiences relating to institutional arrangements concerning intellectual property (IP) enforcement policies and regimes, including mechanism to resolve IP disputes in a balanced, holistic and effective manner.”

Among these mechanisms are specialized IP courts, of which five member states who gave their presentation had established a specific IP court or tribunal charged with ruling on all IP related matters and disputes. Contributions prepared by Pakistan, Portugal, Russia, South Africa, Thailand, the United Kingdom, the International Chamber of Commerce, and Prof. Jacques de Werra of the University of Geneva (CEIPI – ICTSD Joint Study) can be found here [pdf].

Opening the afternoon session, de Werra, vice-rector and professor of intellectual property and contract law at the University of Geneva, presented the joint project report undertaken the University of Strasbourg Centre for International Intellectual Property Studies (CEIPI) and the International Centre for Trade and Sustainable Development (ICTSD).

De Werra elaborated on what it means for a judicial mechanism to be “balanced”, “holistic” and “effective”. He said balance is the essence of an IP system and that being holistic, an IP court should be placed in an ecosystem which considers and interacts with all actors and parties, such as lawyers, litigants and experts as well as society, civil society, academia and industry.

Furthermore, he added, IP law should consider other fields of law and also look beyond legal issues to broader areas like economics, the environment, culture, science and technology. Lastly, to be effective means an achievement of quality, which requires a sufficient level of expertise.

An IP court “is one tool in the innovation policy toolbox,” de Werra concluded. Accordingly, the specificities of countries need to be taken into account, which was echoed by speakers throughout the session. No one model could or has been established, as speakers agreed that IP law is complex, that IP disputes are highly varied and countries differ widely in their contexts and needs.

Under the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) (Art. 41 para. 5), countries are under no obligation to establish a judicial system for the enforcement of intellectual property (IP) rights. Therefore, countries can decide if it is appropriate to establish specialized IP courts.

The report by the International Chamber of Commerce, on the other hand, found that “the creation of specialized intellectual property jurisdictions is believed by many to be a prerequisite for improvement of the overall climate of respect, protection and enforcement of IP rights.”

Features and Benefits of IP Courts

Pakistan has for example established three IP tribunals as pilot projects, with the tribunal in Lahore being fully operational and those in Islamabad and Karachi still in the process of being tested. Muhammad Ismail, deputy director of IPR Enforcement at the Intellectual Property Organization of Pakistan, explained that the tribunals entertain all suits and other civil proceedings regarding infringement of IP and noted that experiences had been good so far.

The United Kingdom established the Intellectual Property Enterprise Court (IPEC) in 2010 to address the high IP litigation costs that often prevented access and recourse to IP litigation, particularly for small and medium enterprises, according to his Honour Judge Richard Hacon, presiding judge of the Intellectual Property Enterprise Court (IPEC) within the Chancery Division of the High Court of Justice of England and Wales.

Caps on recoverable costs at £50,000 British pounds and on damages at £500,000 are set and should provide more certainty for businesses entering litigation as explained by Judge Hacon. Trials should last no longer than two days and there is an active case management in place to expedite proceedings.

Moreover, big multinationals would be kept away and overall the IPEC introduced a “healthy change in industry” where larger enterprises previously might be tempted to bully smaller ones, concluded Judge Hacon.

The Thai Central Intellectual Property and International Trade Court also presented numerous technological tools used by the court to increase the efficiency of case adjudication. These included: video conferencing, a digital testimony recording system and e-filings, to file and deliver litigant pleadings.

Member states further discussed the benefits and advantages of IP courts. By being a specialized forum which pools expertise and experience, IP courts can deal with IP matters and disputes in a faster, more uniform, predictable and reliable manner. The specialization of judges is an important aspect as well to ensure consistency of judgments and enable faster resolution of disputes, member states said.

José Mário Sousa, legal adviser of the Portuguese Trademark and Patent Department for the National Institute of Industrial Property said that there would be “not just knowledge of the rule of law, but also technical expertise.”

The Intellectual Property Court in Portugal in turn also allows for a reduction of cases pending according to Sousa.

Discussion on Specialization

Another important aspect and one that led to discussion during the session was the specialization of knowledge of judges in the IP courts and even the establishment of specialized IP courts themselves.

Justice Louis Harms, former deputy president of the Supreme Court of South Africa, extraordinary professor at the University of Pretoria and honorary bencher of the Middle Temple in London, explained that South Africa has a generalist judiciary where judges are expected to do everything from tax to criminal law, civil law to IP law.

Intellectual property rights have no special status and are equal to all other rights in South Africa and so are dealt with the same procedurally as all other rights, as outlined by Justice Harms.

A Law Reform Commission considered whether the creation of an IP court would be justified but found that it could not. In view of practical aspects from a local perspective, establishment of an IP court is neither affordable nor feasible; there exists a general lack of human, financial and structural resources and a low IP caseload.

In answering the question whether IP enforcement required single dedicated court structure, Harms put forward that, “Simply by introducing a specialist court, does not mean that you get the desired results.”

Instead, “effective IP enforcement requires more than building a court structure, but building respect for IPRs, recognizing the rights of public to the extent the the law allows it, to have sustainable structures, and proper law enforcement at all levels” he said.

In another presentation, while Russia does have an IP court, Vyacheslav V. Gorshkov, judge of the Supreme Court of the Russian Federation and chair of civil judges in Moscow, noted that it is important that “people have access to information of what their rights are and what decisions have been taken.”

The commission also found that specialization may lead to tunnel vision and ultimately, as contended by Justice Harms, “no court can be qualified a priori to deal with all areas of science and technology,” spanning for example from microbiology, nanotechnology or mechanical engineering.

Justice Harms pointed out that the generalist judiciary in South Africa has to deal with many technical matters and where needed could divert technical matters to people with technical backgrounds. It was highlighted that South Africa has a strong IP lawyers and judicial training on IP law is provided.

To summarize, Justice Harms stated that in his view, “Our present structure serves our needs,” and that there is “no real justification to move to specialist enforcement structures. But, he added, “obviously circumstances may change, the workload may become bigger, we may have more experts become available and then we may rethink the whole matter.”

The non-profit Third World Network later posed a question to the panel as to how specialized courts can avoid tunnel vision to address broader development and public policy questions.

In response, Judge Hacon argued that there is always the danger of specialised courts having tunnel vision. If a wrong decision is made, then the point should be taken to a Court of Appeal of England and Wales, which should set this right. In his view, the advantages of having specialized courts outweigh the disadvantages whilst recognizing that IP litigation may never be short or simple.

WIPO’s secretariat set out that in its approach, a solution to issues should “work for a country, taking account its political will, the social and economic situation, and the demand on judiciary and the volume of cases”. Therein, WIPO would share all potential options with member states upon request for advice and then it will be a decision taken by the member.

Acknowledging that judges were not a ‘sect’, other panellists and presenters agreed that judicial exchange and exchange between judges, lawyers and other experts were also important in mitigating the risk of tunnel vision. Thereby, knowledge and experience should be shared and pooled.

Alexandra Nightingale is a researcher at Intellectual Property Watch. She completed her Bachelors in Law at the University of Sussex and holds an LLM degree in International Law from the School of Oriental and African Studies in London. During her Masters, she developed a strong interest in Intellectual Property, particularly patents and the aspects relating to global health. Her research interests now also include geographical indications and trademarks.

 

Image Credits: Flickr – Jenny McBill