AIPPI Congress Report 4: Lawyers who lunch - role of experts in litigation and the EPO in the 21st Century

The AmeriKat getting through her AIPPI lunch
(jet lag, definitely not content related....)

For attendees who just cannot get enough of legal intrigue at AIPPI's Congress, learning and debate can, for a small fee, continue over a three course lunch at two specially organized sessions.  AmeriKat friend, Tanvi Shah (Baker & McKenzie LLP), reports on both lunches at this year's Congress.  The first lunch was a riveting panel of judges discussing expert evidence and the role of experts.  The second lunch showcased a keynote address by EPO President Benoit Battistelli on the steps the EPO is taking to "set the pace for the 21st century".  Tanvi reports as follows:

"Expert evidence and the role of experts 

After a brief introduction to the role of experts in their respective jurisdictions, the panel of judges discussed a wide range of issues including how the experts are selected and paid for, how witness credibility is assessed and particular aspects of interest or concern in their jurisdictions. Key points from each jurisdiction follow. 

Dr. Massimo Scuffi, (President, District Court of Aosta, member of Italian Patent & Trademark Board of Appeals / former Chief Judge of the IP Division of the Court of Milan) explained that across Italy and Europe experts can play diverse roles, ranging from assistants to the parties, the sole legal and technical representative for a party and court-appointed experts. Court-appointed experts in Italy are taken from a list of approved experts (who have been previously assessed for their expertise) and are typically paid for by the losing party as part of the costs recovery process. There are rarely private discussions between the judge and experts - any discussions will tend to take place at a hearing with both parties present. 

Judge Walter D. Kelley, Jr., Hausferd /former District Judge, Eastern District of Virginia highlighted that the US system is highly adversarial and partisan, noting that there is even a privilege between a party's lawyer and their expert witness. Courts are permitted to retain their own experts but this rarely happens. As civil cases are commonly decided by juries the experts must not only have technical expertise but must also be able to simplify things so a jury can understand them. While judges play a role as a gatekeeper to ensure the expert's opinion is based on recognised scientific methods in the field, ultimately the assessment of credibility is made by the jury. Furthermore, because of the jury system, credibility often plays a key role - it is much easier for a jury to decide based on whether it believes one expert over the other than to analyse the strength of the reasoning behind different opinions. Judge Kelley expressed a view that the US would do well to move away from the 'hired gun' nature of expert evidence, and that this would likely be welcomed by the expert witnesses in particular. 

No more US style "hired gun" experts in patent litigation?
Surely not!

Justice John Nicholas (Federal Court of Australia) explained that the Australian system is also an adversarial system, though cases are not decided by jury. He highlighted that steps have been taken to make the use of experts less partisan and more efficient. In particular, a code of conduct has been introduced which stresses that the expert's duties to the court transcend his/her duties to the party that has hired him/her. These changes have made the system more nuanced, so that credibility of an expert is rarely an issue - instead cases are decided on which expert's reasoning and opinions are more persuasive in the context of the case.  

Of particular interest is the increasing use in Australia of concurrent evidence. This process involves the two experts meeting to discuss the issues and identify the points of dispute. The experts prepare a joint report setting out the points of agreement and dispute and the reasons behind the disputes. In court, both experts give evidence concurrently on a particular issue and counsel take it in turns to cross-examine the experts on that issue. This saves time and presents a more coherent body of evidence to the judge. 

Finally, Chief Judge Ryuichi Shitara (Intellectual Property High Court of Japan) explained that in Japan, although the parties can produce expert declarations, it is not common for the judge to hear live testimony from the experts. This is because, although the judges typically do not have a technical background, they are able to rely on judicial research officers (JROs), technical advisors and explanatory sessions in order to understand the technology. In particular all of the courts that hear IP cases have JROs who are typically patent attorneys with a range of specialisms. As they are officers of the court, the judge is able to ask them as many questions as needed to understand the technology and be able to make a judgment in the case. 

The session highlighted the diversity of practices in the different jurisdictions, which in the context of expert evidence and IP litigation is critical given the impact experts can have on the final outcome. As the moderator, Denise DeFranco (Global Head, IP Litigation, Johnson & Johnson / President, AIPLA (US)) concluded, alongside efforts to harmonise substantive law, harmonisation of procedural aspects might also be advantageous. 

The EPO - setting the pace for the 21st century 

The core theme running through EPO President Benoit Battistelli's address was the importance of quality and efficiency at the EPO in the face of an increasing quantity and complexity of applications.

One key point (of which he was clearly proud) was that the EPO expects to grant 90,000 patents this year, a significant one third increase on 2015 - not because it has compromised on the quality of the examination, he explained, but because it has improved its efficiency and cleared the backlog of pending applications. He noted that this has been achieved through a concerted effort of measures to reform and change the culture at the EPO, including:

Merpel finds her AIPPI lunch to have a second use

• an increase in active examiners (without increasing overall staff numbers) by converting over 500 support staff posts to examiner posts and bringing examiners back to examination from other tasks;

• better health management leading to a reduction of over 35% in sick leave since 2010;

• changes to the career management system, including that rewards and incentives are now tied to performance rather than longevity of service, and the introduction of personal annual productivity and quality targets; and

• a continued emphasis on the quality of the examiners - through high qualification expectations on recruitment followed by three years of training on the job.

Alongside these efforts, M. Battistelli described the "Early Certainty from Search (ECfS)" scheme which requires that all incoming searches are issued with written opinions within 6 months and for which the backlog of searches was cleared in mid 2016. Importantly, as of 1 July 2016, the Early Certainty scheme was expanded to cover examination and opposition as well. The aim is for timelines by 2020 of 6 months for a search and its opinion; 12 months on average for examination; and 15 months for a standard opposition. 

Next M. Battistelli discussed the impending reforms to the Boards of Appeal (BoA), which were approved in June 2016, aimed at preserving and improving the independence of the BoA while also improving the efficiency - as M. Battistelli said, good justice needs to be independent but also efficient. The reforms include appointment of a President of the Boards and a move to new premises and went as far as possible while keeping within the constraints of the European Patent Convention. There is currently a 3 - 4 year backlog for cases before the BoA and the long-term aim is to be able to emulate the Unified Patents Court's objective of decisions within 1 year. 

Finally M. Battistelli touched on the Unitary Patent (UP) and stressed his view that despite Brexit the UP will happen - it was just a question of when. If the UK ratifies (which he believes is legally and politically possible), the EPO expects to grant the first UP next year; otherwise it will be delayed several years as it will not be possible to launch the UP until after the UK has left the EU. In the Q&A session, in response to a question about his vision for 2025, he said (with only a touch of irony) that he hoped the UP would finally be a reality by then! 

M. Battistelli concluded the session by expressing his hope that the patent system would continue to develop through a focus on quality - not only from the patent offices but from patent professionals too. He closed with a request to patent professionals (on which I make no comment!): "We need good quality applications"."