2020 Intellectual Property Judges Forum

Day one – November 18, 2020

Opening (13.00 – 13.10)

Session 1: Patentability Assessment in the Pharmaceutical Sector (13:10 – 14:15)

The fundamental threshold question of patentability in the pharmaceutical sector throws into sharp relief some of the challenging determinations faced by courts in adjudicating patent disputes.  Judges are called upon to steer through technically complex subject matter and to answer questions that may have few legal precedents.  At the same time, the constellation of policy considerations that surround the research, development and commercialization of, and consumer access to, human therapeutic drugs, raise heightened expectations and scrutiny of judicial adjudication and its significant impacts to society.  In some cases, these impacts extend beyond national borders, with some questions the subject of worldwide judicial consideration.

This session will explore how courts have considered the elements of patentability as they apply to the context of pharmaceutical patents, such as: characterisation of a claim as a method of medical treatment (in some jurisdictions rendering the subject matter patent ineligible); and comparative approaches to assessing the patentability of follow-on pharmaceutical innovation (e.g., claims covering incremental changes to existing drugs).  The divergences among legal systems will be noted, including different approaches to addressing pharma-specific questions under the rubric of patentability assessment.

Moderator and Speakers

Session 4: Non-Traditional Trademarks (14:30 – 15:30)

Enterprises have been increasingly interested in developing non-conventional or non-traditional marks to identify the source of their products and services in their markets.  Sounds, colors, smells, video clips, holograms and three-dimensional marks are amongst the contemporary forms of trademarks that are being submitted for registration in different parts of the world.

Applications for non-traditional marks have given rise to some debate and a number of judicial decisions across the globe.  Following Article 6quinquies B(ii) of the Paris Convention and Article 15(1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights, national laws require that marks should be distinctive of the products and services of one trader from those of another.  Varying approaches may be taken to the requirements that signs be visually perceptible or that the sign not be exclusively necessary to achieve a technical result.  Each of these requirements presents particular challenges for the consideration of the registrability of non-traditional trademarks.

This session, with reference to administrative and judicial decisions from different jurisdictions, will explore how IP offices and courts have dealt with the interesting questions that arise when deciding to approve or deny the registration of non-traditional trademarks.

Moderator and Speakers

Session 5: Forum Shopping in Multi-Jurisdictional IP Disputes: Example of FRAND Disputes (13:40 – 14:50)

Today’s technology products often require compliance with global interoperability standards, such as Wi-Fi, Bluetooth or 3G/4G/5G connectivity.  These industry standards are often covered by hundreds or thousands of patents (so called “standard essential patents” (SEP)) that are licensed on fair, reasonable and non-discriminatory (FRAND) license terms. 

The global nature and size of the markets for these technology products have resulted in multi-jurisdictional patent litigation that stem from disagreement over the FRAND license rate.  While these patent disputes were concentrated in the telecommunications industry, they are also now observed in other industries employing Internet of Things, such as home appliances and automobiles. 

Taking the example of the multi-jurisdictional disputes arising in the SEP space, the speakers in this session will examine the availability of global relief when the dispute relates to a global patent portfolio, and the relationship between parallel proceedings in foreign jurisdictions, including the availability of anti-suit injunctions.  In these reflections, the speakers will consider the drivers in parties’ choice of jurisdictions and the respective courts’ specificities in addressing the dispute resolution needs in global patent disputes.

Moderator and Speakers