Europe’s new national IP courts

tm.jpgIn December, the European Parliament finally agreed a compromise deal to set up a unitary patent court. But the horse trading and debate that accompanied the deal means that changes in IP litigation systems elsewhere in Europe have not received the focus they deserve. Some jurisdictions have expanded their court network. Italy, for example, has increased its IP litigation capacity by assigning IP divisions to new business courts introduced across Italy. This means that alongside the 12 existing IP sections (encompassing first instance tribunals and courts of appeal) are eight business courts, each located in major Italian cities and authorised to hear detailed IP disputes. They began hearing cases in September 2012.

In contrast, other jurisdictions, including Russia, Switzerland and Finland, have centralised their IP courts.

The idea of a central IP court in Russia was suggested pre-glasnost but the break up of the Soviet Union pushed it down the political and legal agenda. More recently, Anton Ivanov, chairman of the Supreme Court of Arbitration, floated the idea of an IP court at a session of the presidium of the Court on June 23 2010. Ivanov's plan subsequently received the backing of President Medvedev.

The government hopes the court will increase the effectiveness and uniformity of the Russian IP protection system. Russia recently joined the WTO and wants to attract more foreign investment. That's difficult when investors are unsure that their IP rights will be protected. The government hopes that centralising the system will address their concerns.

"We expect an increase in foreign investment associated with technology transfer, as the IP court offers hope for better and more predictable IP enforcement," says Eugene Arievich of Baker & McKenzie in Moscow. "One of the concerns of IP owners, who under the general procedural rules have to sue the infringer at its place of residence, has always been that they would encounter bias and lack of competence in local provincial courts."

But that wasn't the only driver. Lawyers had also complained about the quality of reviews of cases (especially patent cases) carried out by provincial courts. The centralised court is also designed to better deal with the growth of IP litigation in Russia.

"It is a big, positive change. If well-managed it will introduce predictability and transparency," says David Aylen of Gowlings' Moscow office.

The court will be housed in the Innovation Centre in Skolkovo – an area just outside Moscow that is being styled as a Russian Silicon Valley. However, with plans to get the court accepting cases by February 1 2013, it will sit in temporary accommodation in central Moscow until construction at Skolkovo is completed.

The court will have no limitations on who can appear before the court. There will be 20 judges, chosen and appointed after open competition by the Higher Judicial Qualification Commission. Judge Ludmila Novoselova of the Supreme Court of Arbitration will chair the court.

Although officials hoped to appoint judges with both a technical and legal background, a shortage of qualified candidates means that judges will be supported by a team of advisers who have a range of technical backgrounds.

For those looking to enforce their IP rights in Russia, this is good news overall. The new court should introduce uniform court practice, judges with better knowledge of IP matters, and should be able to handle more IP cases, leading to better, speedier proceedings. It should also help to eliminate investors' worries about bias and incompetence in local courts.

"On the one hand, all IP professionals crave a better quality and uniformity of review and decisions. On the other hand, the level of professionalism of judges that will work in the IP court is yet to be seen," says Arievich. "But the general feeling is one of cautious optimism."

The concept of a Swiss Federal Patent Court dates to the mid-1990s and owes much to the work of Swiss politicians and a group comprised of AIPPI/INGRES members lobbying the Federal Institute of Intellectual Property. This then led to a parliamentary initiative, and the court itself.

The new court centralises IP matters instead of them being spread across 26 separate cantonal courts.

"A major factor [behind creating the court] was the discontent in the patent litigation community about the spread of a relatively small number of patent cases over a number of cantonal courts, some of which simply did not have any patent experience," says Christian Hilti of Rentsch & Partner. "The case handling and decision making in such cases took too long."

"I'm very happy with it. Before, patent litigation in Switzerland was often unpredictable. It was just slow, and the courts had no chance to gather know-how," comments Michael Ritscher, of Meyerlustenberger Lachenal.

Swiss practitioners hope the new court will be attractive to international clients, who might consider litigating in Switzerland more regularly. "The stated aims for the court are speedy, competent and cost-efficient proceedings with the support of technically and legally trained non-permanent judges," Hilti says.

"It has been a success so far. It's early – but it has speed, quality and efficiency," adds Ritscher.

The court is located in St Gallen, about 100km from Zurich. It began to hear cases in January 2012.

Litigants with patent disputes concerning infringement or invalidity must file their case at the Federal Patent Court. Those with other IP cases – relating to patent licensing or entitlement, for example – can choose whether to file their dispute with the central court.

Although the Court requires a party to be represented by an attorney-at-law admitted in Switzerland (or a patent attorney in invalidity cases), lawyers say that judges take a more relaxed attitude in practice: "The court exercises rather liberal discretion about the admissibility of statements made even by foreign patent attorneys and representatives in hearings," says Hilti.

The Court's two permanent judges were chosen by the Swiss Federal parliament. They are Dieter Brändle, an experienced patent judge from the commercial court at Zurich, and Tobias Bremi, a patent attorney and judge. There are 25 non-permanent judges who have technical training, and 11 legally trained non-permanent staff.

Litigants should be prepared for the court's polyglot proceedings: "A particularly interesting feature is the fact that cases can be litigated before the Swiss Federal Patent Court not only in German, French or Italian but also in English, if both parties agree," says Hilti. Mono-lingual English speakers will be pleased to know they can litigate in their native language without incurring any translation costs.

IP practitioners have lobbied the Finnish government for an IP court for a generation. Working groups conducted research into the idea, but only now have funds become available to make the court a reality. The IP section of the Market Court is due to begin hearing cases by late 2013.

"The aim of the court is to concentrate all IP cases in one court and so increase the experience and the knowledge base of that court," explains Rainer Hilli, managing partner of Roschier in Helsinki. Although local lawyers are adopting a wait-and-see approach to the Court, most are optimistic about what it means for IP owners.

As the Court has not started to operate yet it remains to be seen how the case law and handling times will develop, says Hilli, who goes on to suggest that the new IP court may eanble Finland to host a local or regional division of the unitary patent court.

The new court will be in Helsinki, sharing premises with the Market Court, which hears commercial law disputes. It will begin receiving cases on September 1 2013.

The court's jurisdiction will extend to patent, design and trade mark cases previously heard at a division of the District Court of Helsinki. But it will also take on copyright cases previously heard by district courts, as well as opposition procedures for trade marks, designs and utility models previously handled by the board of appeals at the National Boards of Patents and Registration. Criminal IP cases will, however, continue to be handled by the general district courts. The Court will be free to set its own level of damages awards, although it has not yet been revealed who its judges will be.

Litigants will need to get used to the court's new rules limiting opportunities for appeal. Says Hilli: "The aim is to decrease the time taken for litigation by restricting the possibilities of appeal. There will remain a restricted possibility to appeal to the Supreme Court. This should be a big boost as the parties will have quicker access to a final ruling."