From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Monday, 15 September 2014

AIPPI Congress Report 1: A new era of IP collaboration and harmonization

The AmeriKat's view of Toronto at this year's AIPPI Congress
"What do you do?" asked the Canadian immigration official at Toronto's international airport.  "I'm an IP litigator", replied the Amerikat.  She paused thinking such a job title was probably more specific than what he was after.  "IP stands for 'intellectual property', right?", the officer replied.  The AmeriKat nodded.  The officer sighed.  "Yeah, we are seeing quite a few of you coming through."  An understatement, if ever there was one.  Thousands of IP lawyers, reporters and the like have come from all corners of the globe this year's AIPPI Congress. Along with her A&O colleagues Eibhlin Vardy and Lorraine Neale, the AmeriKat will be reporting the best bits from this year's Congress for readers who were not able to make the trip to a sunny autumnal Toronto.

Last night's Opening Ceremony was a culmination of a day which saw the AmeriKat bursting into huge smiles when seeing old friends and meeting new ones, contributing to the tailoring of the new working questions for next year's Congress in Rio (the four questions are on trade secrets, copyright exceptions for libraries and academic use, inventorship and free-riding in respect of trade marks) and clinking glasses with her colleagues on the new Special Committee on the Unified Patent Court.    

The Opening Ceremony held at the cavernous Roy Thomson Hall saw a panel of speakers welcoming the attendees in between bursts of energetic arrangements of famous Canadian music from the 60s to now.  The outgoing President of AIPPI, John Bochnovic (Smart & Biggar) gave an emotional speech about the work AIPPI has done to increase the involvement of its members and efficiency of the organization, and most importantly, its global reach.  More needed to be done to reach potential members in Africa, Bochnovic stated, as well as maintaining the constant collaboration with members outside of annual events like the Congress.  He also welcomed the new regime whereby Congresses would be held annually instead of every two years, as a step in ensuring constant collaboration.  Next stop, Rio de Janeiro in 2015.    

The key note speech was given by the quietly eloquent (and funny) Justice Marshall Rothstein of the Supreme Court of Canada.  Justice Rothstien continued the theme of collaboration and harmonization with that of the coordination of the law between domestic courts.  He recommended that domestic courts should consider judgments of other foreign domestic courts as, in his experience, a well-reasoned decision of a foreign court on similar facts can provide good insight into the legal analysis and the possible consequences of such a decision.  It can be beneficial, he continued, but not always appropriate.  

In support of his argument Justice Rothstein cited two Canadian Supreme cases.  The first was the 2008 decision in Apotex v Sanofi whereby the court was tasked to consider validity of selection patents and the test for anticipation and obviousness.  There the Court found assistance from Lord Walker in the House of Lords decision in Synthon v SmithKline Beecham.  This was an example of where Canadian law was reinforced and supported by foreign sources.  In respect of the obviousness test, Justice Rothstein stated that at the time the Canadian test was considered out of step with the rest of the world, particularly the UK and US where a more flexible approach was being applied.  Although the Canadian court was not bound to change the law they nevertheless considered it worth while to examine foreign sources such as Justice Kennedy's Opinion in KSR and Lord Hoffmann's dicta in Lundbeck.  Again, these decisions helped strengthen the Canadian law on obviousness so that it could evolve into a more flexible test .   

But foreign law does not always have immediate weight.  In the Harvard Mouse case, the Canadian Supreme Court overturned Justice Rothstein's decision when he was an appellate judge which would have permitted patentability in the case.  Such a decision would have been inline with caselaw in the US and Europe.  He specifically applied the US Supreme Court's decision in Chakrabarty to find support for patentability for higher life forms.   The Canadian Supreme Court overturned his decision in a 5:4 vote.  Like Justice Rothstein, the dissent also found support for patentability in the laws of other countries.  The position in other countries was not a reason per se for the Canadian court to permit patentability of higher life forms, but because:
"The mobility of capital and technology makes it desirable that comparable jurisdictions with comparable intellectual property legislation arrive at similar legal results."
Justice Rothstein considered that the openness of comparative analysis can lead to gradual harmonization which is an "important and laudable goal for IP law".

In concluding his key note address, Justice Rothstein recalled the occasion when he was asked to decide a moot held at UCL between Sir Robin Jacob and Lord Hoffman (watch the moot here).  At the time he turned to his wife and asked "Did you ever in your wildest dreams think I would be asked to decide a moot between these two world IP icons?"  His wife turned to him and said "Marshall, you are not in my wildest dreams."

And with that, the 2015 AIPPI Congress is open.  Expect more reports this week from the AmeriKat, Eibhlin and Lorraine on topics as diverse as second medical use and the ever-important issue of harmonization of privilege. 


Anonymous said...

Whilst harmonisation of IP court decisions across national boundaries seems laudable, we need rules for how it will be done. Otherwise judges will cherry-pick, making outcomes less predictable and increasing the likelihood of error. This suggestion pops up every now and then, but until the courts or legislators lay down the rules under which a foreign decision can be taken into account I think individual judges need to be very wary about it.

MaxDrei said...

Don't agree, that cherry-picking is bad.

Why? My experience of the way each of the 20+ Technical Boards of Appeal of the EPO have cherry-picked the best legal lines from each other, over the last 30 or so years.

In consequence, there is no jurisdiction in the world with greater legal certainty on the substantive law of the validity of patents than the EPO. If you don't believe me, just read successive Editions of the EPO-DG3 White Book

We need as much cherry-picking as possible, not less of it!

Anonymous said...

MaxDrei, EPO Boards of Appeal cherry-picking from each other is very different from courts in different countries doing the same. In the UK for example we have a different inventive step test from the EPO. So judges cannot simply accept EPO decisions on inventive step without first considering such differences. I'm still a bit bemused as to when UK judges will consider 'reasonable expectation of success'. They seem to do so whenever it suits them, without explaining themselves. So I don't trust them with taking from other 'more distant' jurisdictions such as the US.

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