In recent years, with the intensification of international technological competition, Germany, the United States, Thailand, South Korea, Japan and other countries have successively set up national-level IPR appeal hearing mechanisms to protect their own scientific and technological innovations and ensure the unity and certainty of IPR adjudication. By tracing the recent work of foreign intellectual property courts, this paper introduces the progress and related work measures of foreign intellectual property courts in recent years in court establishment, case trial, response to epidemic situation, diversified dispute resolution mechanism, information work, judicial openness and international exchange, with a view to enlightening.
I. Basic information on the establishment of overseas intellectual property courts
The establishment of early intellectual property courts
Before 2020, the specialized intellectual property courts (courts) established around the world mainly include: the German Federal Patent Court established in 1961, the British High Court Patent Court established in 1977, the Korean Patent Court established in 1998, the Singapore Intellectual Property Court established in 2002, the Japanese Intellectual Property High Court established in 2005, the Malaysian Intellectual Property Court established in 2007 and the British Intellectual Property Enterprise established in 2013.
In addition, although the scope of the US Court of Appeals for the Federal Circuit established in 1982 is not limited to intellectual property cases, patent civil and administrative cases and the "337 investigation" appeal case of the US Federal Trade Commission are all under its exclusive jurisdiction and constitute the main types of cases it actually accepts.
The Thai Intellectual Property and International Trade Court, established in 1997, is not limited to intellectual property cases, but all first-instance intellectual property cases, including civil cases and criminal cases, are under its exclusive jurisdiction.
Although the scope of accepting cases by the Finnish Market Court established in 2013 is not limited to intellectual property cases, all intellectual property cases except criminal cases are under its exclusive jurisdiction.
Recent establishment of intellectual property courts
On July 1, 2020, in order to ensure the uniformity and certainty of the adjudication of intellectual property cases, Poland established a number of specialized intellectual property courts, including four intellectual property courts of first instance and two intellectual property appeal courts, among which technical intellectual property cases were under the exclusive jurisdiction of the Warsaw District Intellectual Property Court.
In addition, the establishment of the European unified patent court is progressing closely, and will begin to accept cases after the entry into force of the Agreement on the Unified Patent Court. The entry into force condition of the Agreement on Unified Patent Courts is that the domestic legislatures of at least 13 member countries (including Germany, France and Italy, which hold the most valid patents) approve the Agreement, and the entry into force date is the first day of the fourth month after the last country that meets the entry into force conditions deposits its instrument of ratification.
In August, 2021, Germany, as the last country to achieve the conditions for entry into force, ratified the Unified Patent Court Agreement, which will take effect on the first day of the fourth month after Germany deposited its instrument of ratification. It is noteworthy that in order to ensure the smooth transition to the operation stage of the unified patent court after the entry into force of the unified patent court agreement, the provisional application agreement of the unified patent court agreement agreed in part of the unified patent court agreement came into effect on January 19, 2022, and the eight-month provisional application period of the unified patent court agreement has officially started.
The European unified patent court has started the final preparatory stage, and its administrative Committee has adopted the rules of European patent litigation qualification regulations, European unified patent court service and personnel regulations, financial regulations and so on; The Advisory Committee responsible for the recruitment of judges in the Unified Patent Court has been established, and the registration of judges has been closed, and about 1,000 applications have been received. Almost all patent judges in Germany and France have signed up for this recruitment activity, and the selection work is currently underway. It is expected that the European Unified Patent Court will be officially put into operation in September 2022 or early 2023.
Second, the main work of the recent extraterritorial intellectual property courts
In the trial of cases
1. The trial of the case
The U.S. Court of Appeals for the Federal Circuit accepted 1,511 appeals, 1,456 appeals and 1,582 appeals in 2019, 2020 and 2021 (from September 30 of the previous year to September 30 of that year); 1602 cases, 1568 cases and 1370 cases were concluded respectively. Intellectual property cases accounted for 67% (about 1012 cases), 61% (about 888 cases) and 53% (about 838 cases) respectively. Among them, the patent examination cases from the US Patent and Trademark Office accounted for 43% (about 650 cases), 38% (about 553 cases) and 35% (about 553 cases) respectively; The patent cases from the U.S. federal district court accounted for 22% (about 332 cases), 21% (about 306 cases) and 16% (about 253 cases) respectively. Trademark cases accounted for 2% of the total number of cases received in three years, about 30, about 29 and about 32 respectively.
In 2019 and 2020, Japan’s Intellectual Property High Court accepted 259 cases of intellectual property rights (174 cases of first instance and 85 cases of civil appeal) and 221 cases (152 cases of first instance and 69 cases of civil appeal); 254 cases (166 cases of first instance requesting to cancel the ruling and 88 cases of civil appeal) and 224 cases (159 cases of first instance requesting to cancel the ruling and 65 cases of civil appeal) were concluded respectively. In 2019, the average trial period of first-instance cases requesting revocation of the ruling was 8.6 months, and the average trial period of civil appeal cases was 7 months. 9.6 months and 9 months respectively in 2020.
In 2019 and 2020, the Korean Patent Court accepted 949 cases of intellectual property rights (836 cases requesting cancellation of administrative rulings and 113 cases of civil appeals) and 797 cases (671 cases requesting cancellation of administrative rulings and 126 cases of civil appeals); 930 cases (801 cases requesting cancellation of administrative ruling and 129 cases of civil appeal) and 877 cases (758 cases requesting cancellation of administrative ruling and 119 cases of civil appeal) were concluded respectively. In 2019, the average trial period of administrative cases was 237 days, and the average trial period of civil appeal cases was 308 days. 251 days and 320 days in 2020 respectively.
The German Federal Patent Court accepted 1,548 and 1,505 intellectual property cases in 2019 and 2020 respectively; 1838 cases and 1632 cases were concluded respectively. The average trial period of each court in the German Federal Patent Court is different, among which the average trial period of the invalid court is 27.8 months in 2019 and 32.8 months in 2020; The average trial period of the Technical Appeals Tribunal is 28.5 months in 2019 and 27.9 months in 2020; The average trial period of the court of appeal for utility model patents is 22.9 months in 2019 and 20.9 months in 2020; The average trial period of the Trademark and Design Patent Appeal Court is 22.1 months in 2019 and 21.8 months in 2020; The average trial period of the Legal Appeal Court is 10.4 months in 2019 and 8.4 months in 2020.
In 2019, 2020 and 2021, the Intellectual Property and International Trade Court of Thailand accepted 2,838 cases (207 civil cases and 2,631 criminal cases), 2,073 cases (211 civil cases and 1,862 criminal cases) and 554 cases (64 civil cases and 490 criminal cases) respectively; 2,957 cases (217 civil cases and 2,740 criminal cases), 2,078 cases (186 civil cases and 1,892 criminal cases) and 467 cases (53 civil cases and 414 criminal cases) were concluded respectively.
2. Relevant important referees in recent years
On compensation for damages in patent civil infringement cases.
In February, 2020, the Japanese Intellectual Property High Court used the calculation method of damages based on loss of profits in the case of "MTG v. Five Stars" involving the patent infringement dispute of beauty instruments, arguing that the contribution of patents was not considered when calculating damages, and finally the amount of damages was 440.06 million yen.
In November 2020, in the case of "Vectura v GlaxoSmithKline" patent infringement dispute, the US Court of Appeals for the Federal Circuit upheld the judgment of the court of first instance that the infringer’s sales of nearly $3 billion was multiplied by the license fee of 3%, and that the infringer compensated the patentee for a total of more than $89 million.
In September, 2021, the U.S. Court of Appeals for the Federal Circuit partially revoked the district court’s judgment in the case of SRI and Cisco, and decided that Cisco Company constituted intentional infringement, bearing twice the punitive damages, and maintaining the district court’s judgment on fully supporting the lawyer’s fees.
In September of the same year, the U.S. Court of Appeals for the Federal Circuit overturned the judgment of the district court in the case of Lubby Holdings and Henry Chung, arguing that Article 287 of the U.S. Patent Law requires that the patentee must inform the infringer of what acts are suspected of infringement and which patent is infringed by the alleged infringing product. At the same time, The infringer is required to stop the infringement or seek a patent license. Because the patentee in this case failed to provide evidence to meet these requirements, the U.S. Court of Appeals for the Federal Circuit overturned the judgment of the district court on the tort compensation caused by the infringer’s infringement before being sued, and sent the case back to the district court for retrial and decided on the tort compensation caused by the infringement after the prosecution.
On patentability in patent administrative cases.
In February, 2021, in the case of Trustees of Columbia University v. Illumina, the U.S. Court of Appeals for the Federal Circuit pointed out that it was obvious to use the known literature to identify the patent unless it was clearly stated that the method of disclosure was not feasible or should not be adopted.
On the intersection of patent civil infringement and administrative invalidation procedure.
In January, 2021, in the case of ABS and Cytonome, the U.S. Court of Appeals for the Federal Circuit dismissed the appeal filed by the accused infringer ABS Company for reconsideration procedure on the grounds that the judgment that the accused infringer did not constitute infringement in both civil cases had become the final judgment and the accused infringer had no interest in the patent invalidation reexamination decision.
On the identification of evidence of patent infringement.
In April, 2021, the U.S. Court of Appeals for the Federal Circuit upheld the district court’s judgment that Sharp Company did not constitute patent infringement against Wi-LAN Company, and held that the printed source code of a third-party chip manufacturer did not constitute a business record, and the attached employee statement was prepared in response to the lawsuit, and was not kept during the regular activities, so it could not be used as evidence to prove the infringement.
On the protection of pharmaceutical patents.
On September 30, 2021, the Korean Patent Court overturned the ruling made by the Korean Intellectual Property Hearing and Appeal Committee, and decided that PEGylated drugs belonged to the new drugs in the drug patent extension system under the Korean patent law system, which expanded the scope of new drugs considered by the Korean Intellectual Property Office, thus being more coordinated and consistent with the scope of new drugs in the drug patent extension system in the United States and the European Union.
On October 9, 2020, the German Federal Patent Court decided that the combination of ezetimibe and simvastatin was not innovative drugs in the case of invalid patent supplementary protection certificate for ezetimibe /simvastatin, and revoked the issued EU supplementary protection certificate.
On the identification of artificial intelligence inventors.
Since 2018, steven tyler, an American scientist, has submitted patent applications to many countries or regions as the inventor of his artificial intelligence system. Law enforcement and judicial organs in various countries are faced with the legal issue of whether the artificial intelligence system is the inventor of the patent. In this regard, different judicial organs present different views.
The German Federal Patent Court ruled in November 2021 that although the artificial intelligence system cannot be an inventor of a patent alone, it can be added as an inventor and written in the patent application.
In September 2021, the British Court of Appeal also rejected steven tyler’s request to list artificial intelligence as a patent application of a separate inventor. At present, the case has been appealed to the British Supreme Court; In September 2021, the U.S. Federal District Court for the Eastern District of Virginia ruled that the artificial intelligence system could not be an inventor under the U.S. patent law.
On the contrary, the Australian Federal Court of Appeal ruled in July 2021 that artificial intelligence can be used as a patent inventor according to Australian patent law.
In addition, in Japan, South Korea and other countries, the patent issue of the DABUS case is still under review.
With the development of artificial intelligence, artificial intelligence has challenged the patent laws and judicial organs of various countries, and whether artificial intelligence can become a patent inventor is gradually being explored and clarified in various countries.
Work initiatives
1. Work measures to deal with the epidemic situation
Affected by the outbreak of the COVID-19 epidemic in 2020, overseas intellectual property courts took timely measures to deal with the epidemic, mainly including the following aspects:
The first is to start using remote trial. Japan’s Intellectual Property High Court, Germany’s Federal Patent Court, Thailand’s Intellectual Property and International Trade Court and the UK’s Patent Court all use Microsoft Teams software or the commercial version of Skype software to conduct trials by remote video conference.
The U.S. Court of Appeals for the Federal Circuit issued an announcement in official website at the beginning of the outbreak to suspend off-line court sessions, and changed the cases that really needed to be heard to be held by teleconference, and provided real-time audio live broadcast to the public on official website.
The second is to limit the number of courts. The German Federal Patent Court adopts a combination of online and offline trial, that is, the judge and the lawyer of one party are in court, and all other litigants participate in the trial through remote video conference. At the same time, the German Federal Patent Court also issued regulations to limit the number of courts, limiting the number of standard courts with 30 people to 9 and the number of large courts with 90 people to 30.
The third is to encourage parties to submit case materials online. Thailand’s Intellectual Property and International Trade Court encourages parties to use the electronic document system and the court’s comprehensive online service system to follow up the status of cases and pay legal fees and other expenses without going to court.
The fourth is to amend the rules of civil procedure. In July, 2020, the U.S. Court of Appeals for the Federal Circuit promulgated the newly revised Rules of Procedure for the Federal Circuit, including the relevant provisions on the submission of documents by electronic means, and the provisions on the delay of the limitation of action when neither electronic nor on-site paper submission can be made.
In addition, the Thai Intellectual Property and International Trade Court announced the new rules of remote trial during the epidemic in time, allowing all civil cases to be litigated online.
The fifth is to focus on dealing with the backlog of cases. In order to cope with the backlog of cases caused by the epidemic, the British courts have established courts (also known as "Nightingale Courts") that have been converted from hotels, concert halls or theaters, and hired part-time judges and retired judges to hear cases that have been backlogged due to the epidemic. In an interview, the judge of the British High Court said that except for the early ban due to the epidemic, the patent court almost did not postpone hearing any cases.
Sixth, strengthen the protection of trial data and information. In order to cope with the backlog of cases during the epidemic and the fact that judges often take case materials home for processing, the trial data protection team of the British courts published a guide to the protection of trial case data information in April 2020, which stipulated specific norms for the preservation of case materials to prevent the disclosure of trial data.
During 2021, some foreign intellectual property courts adjusted epidemic prevention measures. For example, since September of that year, the United States Court of Appeals for the Federal Circuit began to resume on-site trials of some cases, but made requirements for the number of people participating in the trial, wearing masks, and nucleic acid testing certificates.
2. Diversified dispute resolution mechanism
On May 25th, 2020, Korea Patent Court signed a memorandum of cooperation with Korea Commercial Arbitration Commission. According to the memorandum of cooperation, the Korean patent court can refer some arbitration cases related to intellectual property rights to the Korean Commercial Arbitration Commission for handling, so as to promote the diversified dispute resolution of intellectual property cases.
3. Informatization work
The German Federal Patent Court has long joined its own information cooperation project. According to the requirements of related information work, it will realize the electronization of all documents by January 1, 2026 at the latest. This requires the German Federal Patent Court to replace its visualization system that has been used for many years and switch to the visualization trial system agreed in the cooperation project. At present, the German Federal Patent Court is focusing on transferring trial case files to a visual trial system. According to statistics, there are 5,500 directories and 450,000 files to be transferred.
4. Judicial openness
On August 10, 2020, the Korean Patent Court signed a memorandum of cooperation with the World Intellectual Property Organization, which will provide WIPO with the English version of the intellectual property judicial judgment of the country, thus facilitating foreign parties to obtain the judgment of the Korean Patent Court and improving the influence of the intellectual property trial in the country.
Both the Japanese Intellectual Property High Court and the Korean Patent Court have formulated and published the 2020 edition of the court introduction manual and the 2021 edition of the court introduction manual in official website in time, which contains the historical evolution, organizational structure, litigation procedures, research and exchange, case trials and other contents of the court.
International exchange
On September 17, 2020, the library jointly established by Thailand Intellectual Property and International Trade Court and the World Intellectual Property Organization was officially put into use, and all books and materials were open to judges, lawyers, government agencies and the public. The establishment of the library is one of the important contents of the Cooperation Statement signed by the Thai Intellectual Property and International Trade Court and the World Intellectual Property Organization in 2018.
On November 11-12, 2020, the Korean Patent Court held the 6th Global Intellectual Property Court Conference with the theme of "Court, Intellectual Property and Globalization". A total of 500 intellectual property judges, lawyers and scholars from the United States, Britain, Belgium, Australia, Japan and other countries attended the meeting. The topics exchanged in this meeting cover biotechnology patents and software patents, design patent litigation, transnational patent litigation, standard essential patents and other fields.
From November 10th to 11th, 2021, the Korean Patent Court continued to hold the 7th Global Intellectual Property Court Conference with the theme of "Court, Intellectual Property and Harmonization" by combining online and offline. The topics exchanged at the meeting covered the latest hot topics such as compulsory patent licensing, the challenge of artificial intelligence to patent law, the protection of computer software copyright, and how to balance the interests of units and employees in job invention-creation cases.
In January, 2021, Japan Intellectual Property High Court held the 2020 annual intellectual property judicial seminar online. Judges and lawyers from the United States, Britain, Germany and Japan participated in the discussion and exchange of two themes: "the status quo of equivalent infringement in patent infringement litigation" and "court litigation activities under epidemic situation".
In October, 2021, Japan Intellectual Property High Court continued to hold the 2021 judicial seminar on intellectual property, and judges and lawyers from various countries discussed and exchanged two themes: "International comparison of indirect patent infringement" and "using expert knowledge in civil litigation".
otherwise
In response to the professionalism and complexity of the current trial of technical intellectual property cases, the Korean Patent Court set up a technical consultation expert recommendation committee on July 17, 2020, appointed nine experts from different research institutions as members of the committee, and revised the relevant domestic trial rules. According to the latest trial rules, in the process of hearing technical cases, if the presiding judge needs the support of experts in related technical fields, he can make a request to the Technical Advisory Expert Recommendation Committee, and the Committee will provide experts in related fields according to the request to help the judges hear related technical cases.
Third, analysis and enlightenment
It has become an international trend to establish an appeal mechanism for intellectual property cases at the national level.
Germany, the United States, Thailand, South Korea, Japan and other countries have successively set up national-level IPR appeal trial mechanisms, and have formed a relatively mature IPR trial operation mechanism.
Poland also established a centralized trial system for intellectual property cases in July 2020.
The European unified patent court, which was established beyond the national level, officially entered the final preparatory stage on January 19, 2022, and it is expected to start its official operation in September 2022 at the earliest.
In recent years, the globalization trend of intellectual property litigation around standard essential patents, pharmaceutical patents, artificial intelligence and other fields has become increasingly prominent. The competition among countries for and safeguarding their own jurisdiction, excluding and restricting the jurisdiction of other countries has intensified, and the trend of centralized trial of intellectual property cases has become increasingly obvious. It has become an international trend to establish a unified national or even supranational regional appeal trial mechanism for intellectual property cases.
The internationalization trend of intellectual property disputes is becoming more and more obvious.
In recent years, in the fields of standard essential patents, medicine, artificial intelligence, etc., many countries are facing the same legal problems at the same time, parallel lawsuits occur from time to time, and the internationalization trend of intellectual property disputes is becoming increasingly obvious. On the one hand, we should continue to pay attention to the extraterritorial dynamics, learn from the useful experience of extraterritorial courts, and broaden our international horizons; On the other hand, it is also necessary to thoroughly investigate the actual situation of scientific and technological enterprises, especially multinational enterprises, and respond to the judicial needs of scientific and technological innovation subjects. It is necessary to strengthen the research on difficult and complicated problems in new fields and new formats of intellectual property, sum up the rules of adjudication in a timely manner in combination with the trial practice inside and outside the region, and timely study the coping strategies of intellectual property problems in new fields and new formats, so as to provide judicial wisdom support for the emerging new and complex problems. In addition, in view of the new problems, new situations and the improvement of intellectual property trial mechanism faced by all countries, it is necessary to increase judicial exchanges and discussions with overseas intellectual property courts, deeply participate in global intellectual property governance under the framework of the World Intellectual Property Organization, and promote the improvement of the international intellectual property governance system.
(Author: the Supreme People’s Court)
