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Wednesday, 26 August 2015

“Simple Past, Present Continuous…Future Perfect?” GFIP Conference Report III

After an evening where speakers and attendees alike sought to find their bearings in the large expanse of the Marina Bay Sands Hotel (and no doubt tried to decide when to go the top of the hotel to indulge in the famous swimming pool and vista from the 57th floor). This Kat has not yet found the time to take the plunge—but he will.

The two plenary sessions of the second day of the programme moved from discussions on national, regional and international aspects of IP to a consideration of two main pillars of IP practice—the courts and the creation of value from IP. As in previous GFIP programmes, the judges’ plenary session is a particular favourite of the attendees. The four judges participating in this programme were George Wei (Supreme Court of Singapore), Sir Colin Birss (High Court, England and Wales), Cheng Yongshun (former Deputy Chief Judge, Beijing High Court IP Tribunal) and Randall Rader (former Chief Judge, U.S. Court of Appeals for the Federal Circuit).

Justice Wei focused on the judicial challenge posed by the need for construing key IP notions that are not further defined or explained in the relevant statute. He mentioned three salient examples. The first is determining obviousness/inventive step. The difficulty in fixing a test and then applying it is well-known in the jurisprudence of numerous countries. From the world of trade marks, Justice Wei addressed the issue of how to “graphically represent” scent marks against the need that the representation serve as notice to the public. Then turning to copyright, he focused on how to determine when “authorizing infringement” has occurred. Of particular interest were his comments on the difficulty that a judge faces when existing case law confronts arguably changing circumstances. He mentioned Lord Neuberger’s recent decision in the recent UK Supreme Court Starbucks "NOW" case in this regard [this Kat has previously expressed his own views on this case].

Mr Justice Birss was of the view that IP cases are characterized by three particular features: (i) many cases have an international aspect: (ii) often they are technologically complex; and (iii) IP cases tend to be high profile. Against this backdrop, he considered how to achieve a judicial balance between predictability and discretion in reaching the “right” result. He highlighted how this balancing can lead to decisions favouring one over the other by referring to the recent US Supreme Court case in the Kimble Spiderman dispute [on which see the AmeriKat here] and the UK Supreme Court decision in Virgin [noted by the IPKat here]. In Kimble [see here for this Kat’s view of that case], predictability was preferred, while in Virgin the court overruled 100 years of precedent. Mr Justice Birss suggested that it was difficult to reconcile these two results (although he also admonished the audience to remember that nothing said in his presentation in any manner would bind him when called up to render judgment in a given case). He particularly intrigued the audience by his suggestion that the common law system of trial, with the high costs involved, might well seek to learn from the trial system in Continental law systems.

Balancing acts: best when not "amorphous"
Justice Rader, in his inimitable style of presentation, bemoaned the current state of IP (and in particular patent) court-made jurisprudence. He described how this jurisprudence has resulted in three types of risk: (i) unintended consequences; (ii) less predictability and (iii) the absence of statutory basis for some results. Echoing Mr Justice Birss, Judge Rader also mentioned the high cost of patent litigation as a fundamental problem for which few practical solutions have been implemented. He was particularly critical of the approach taken by the US Supreme Court, which is wont to apply various forms of an “amorphous” balancing test when ruling on cases before it. In Judge Rader’s view, such an approach is less appropriate for IP cases, where more bright-line rules would better serve the interests of the parties.

The final judge to speak was Judge Cheng. As with his Chinese colleague He Zhiman, who spoke yesterday, Judge Cheng spoke with refreshing openness about judicial IP matters. His focus was on the development of the court system in China as it applied to IP matters and how such challenges might better met by the establishment of specialized IP courts in 2014. Three main problems were described regarding the courts as they dealt with IP issues: (i) inexperienced judges: (ii) inconsistent decisions and (iii) uneven distribution of cases loads across different regions. To address this, specialized IP courts have been so far been established in Beijing, Shanghai and Guangzhou. As well, other measures, such as the submission of amicus curiae briefs, are being considered.

1 comment:

Anonymous said...

Re Radar: One of the most amorphous tests came out of the Alice US Supreme Court decision, but the Federal Circuit was able to do no better on the same case for which Radar was one of the judges. I have not seen anyone propose a good solution to the problem of software/business method patents which clearly do cause too many problems for third party freedom to operate.

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