Study: Specialized IPR Courts Offer Many Advantageous
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
Follow Gene on Twitter @IPWatchdog
Posted: May 9, 2012 @ 5:48 pm
Information on the world’s specialized intellectual property courts can now be found in one place. The Study on Specialized Intellectual Property Courts, a joint effort published by the International Intellectual Property Institute (IIPI) and United States Patent and Trademark Office (USPTO), is the first study to catalog the world’s specialized intellectual property court regimes. Not surprisingly, the study concludes that governments around the world should adopt some form of specialized IPR court to handle intellectual property cases. Specialized IPR courts were found to enhance efficiency, lead to more timely resolution and foster more consistent rulings and outcomes. Such courts are also an important signal to individuals and industry that a country takes intellectual property enforcement seriously, which we in the industry know is a precursor to economic development and outside investment.
In order to assist researchers in their efforts to compare countries’ respective regimes, the International Intellectual Property Institute is hosting an interactive map of the study’s results on its website.
Bruce Lehman, Chairman and President of the International Intellectual Property Institute and former Assistant Secretary of Commerce and Director of the USPTO, praised the study’s publication saying: “Effective rule of law is essential to the stability of the global intellectual property rights system. This study provides countries considering implementing specialized court regimes with the accumulated knowledge of the world’s most effective intellectual property institutions.”
Researchers conducting the study reviewed the intellectual property laws and regulations of over 190 countries and classified those countries according to their possession or consideration of specialized intellectual property courts, divisions, or tribunals or specialist judges. The study also contains 76 paragraph-length summaries describing arrangements in non-case study countries and multinational organizations. It concludes with a series of effective practices, describing the advantages and disadvantages of specialized intellectual property courts for countries interested in implementing such arrangements.
In addition to studying the specialized IP courts throughout the world, the study also assessed the effectiveness of courts in ten countries. The study contains 10 chapter-length case studies analyzing the intellectual property courts of Greece, Japan, Kenya, Malaysia, Mexico, South Africa, Thailand, the United Kingdom, the United States, and the Andean Community. The case studies were chosen to represent the various types of specialized IPR courts and to ensure geographic and economic diversity. These case studies analyze the impact of specialized IPR courts on producing consistent case outcomes in similar factual situations, the level of IPR expertise in the judiciary, and the conduct of commerce in IPR-dependent sectors. The results of these case studies suggest a positive correlation between specialized IPR courts and the efficient and effective resolution of IP cases, which is hardly surprising but in order to combat the nay-sayers it will indeed be valuable to have empirical evidence and case studies to support this rather obvious conclusion.
The study also recognizes that there are many different types of specialized intellectual property courts that operate under a variety of different names and in different procedural contexts, although the core functions of such courts are often similar. The study identifies each country as possessing one or more of the following:
- Specialized IPR Trial Court
- Specialized IPR Appeals Court
- Specialized IPR Trial Division
- Specialized IPR Appeals Division
- Commercial Trial Court
- Commercial Appeals Court
- Trial Court that Exclusively Hears IPR Cases
- Appeals Court that Exclusively Hears IPR Cases
- Administrative Tribunal
- Specialized Judges on Courts of General Jurisdiction
- Considering Specialized IPR Court, Division, or Tribunal
- Considering Commercial Court
As you read the list you will see that in some countries an alternative to a strict IPR court is have a court of general jurisdiction with a specialized division that exclusively hears intellectual property cases. Since most IPR disputes are trade related, many countries designate commercial courts as the proper venue for IPR cases.
Some of the key findings of the study include:
- Specialized IPR courts allow for development of subject matter expertise, which fosters timely adjudication, as well as accurate and more consistent rulings.
- The creation of specialized IPR courts allows the government to establish specialized rules and procedures which are uniquely suited to IPR cases.
- The establishment of specialized IPR courts produces expertise in judges and practitioners, which make enhance adaptability to evolving technologies and associated issues.
- Government investment in specialized IPR courts signals to the public that intellectual property rights will be respected and meaningfully enforceable.
Based on the case studies the report recommends that government officials follow the following practices when developing specialized IPR courts:
- Appoint judges who have a background in intellectual property issues.
- Try intellectual property cases by judge, not by jury.
- Provide judges with continuing training throughout their appointment.
- Anticipate judicial turnover and be prepared to train replacement judges.
- Provide judges with technical experts.
- Create specialized intellectual property enforcement units.
Not surprisingly, at least to those of us in the industry I’m sure, this exhaustive review of specialized IPR courts concludes that such courts have many advantages. The report concludes: “Specialized courts benefit the IPR owners and the government alike as they are more efficient and expedient… it is advisable for government officials to consider developing and maintaining some form of specialized IPR court.”
Before publishing the study, the study’s investigators hosted a seminar at the United States Patent and Trademark Office’s Global Intellectual Property Academy (GIPA) in Alexandria, VA, to which they invited and judges, academics, and other government and legal professionals from over 20 countries in order to solicit their opinions on the study’s preliminary findings. The investigators then integrated the feedback that their received during the seminar into the final document.
Assoc. Prof. Rohazar Wati Binti Zuallcobley (Malaysia) was the study’s principal investigator. Hon. Jorge Amigo Castañeda (Mexico); Mr. Ahmed J. Davis (United States); Mr. Owen Dean (South Africa); Hon. Michael Fysh QC, SC (United Kingdom); Hon. Louis Harms (South Africa); Prof. Dionysia Kallinikou (Greece); Hon. Ryoichi Mimura (Japan); Hon. Nicholas Ombija (Kenya); Mr. Shinjiro Ono (Japan); Dr. Ana María Pacón (Peru); and Mr. Kiat Poonsombudldert (Thailand) also contributed to the study. The study updates the International Bar Association’s 2005 survey on the same subject.
About the Author
Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.