LOTF2011 | Emmanuel Lazega

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Mapping Transjudicial Dialogue and Learning Across Borders

Prof. Emmanuel Lazega, University of Paris-Dauphine Prof. Ton Hol, University of Utrecht

Dr. Sam Muller, Director of HiiLProf. Jan Brinkhof, University of Utrecht Prof. Willem Hoyng, University of Tilburg

With the collaboration ofMerlin Majoor, Dr. Bald de Vries, Yuki de Vroomen and Daniel Wegen

December 30, 2009

The Case of European Intellectual Property Judges Assembled at the Venice Forum (2008 and 2009)

Survey Report to EPLAW, IPJA and EPO

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AcknowledgmentsWe express special thanks to Judge Ernst J. Numann for inspiration and advice.

This report is funded by the HiiL’s Highest Courts in an Internationalising World: an Agenda for Dialogue and Research Project:

http://www.hiil.org/research/main-themes/highest- courts/research-project-the-changing-role-of-highest- courts-in-an-internationalising-world/

Authors are sole accountable for any controversial statements possibly made in this report.

http://www.hiil.org/research/main-themes/highest-courts/research-project-the-changing-role-of-highest-courts-in-an-internationalising-world/



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CONTEXT & METHODS


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The study• Academic study investigating how judges learn from

each other internationally, how they look at the work (methods, decisions, etc.) of other judges across borders.

• Context characterized by the creation of the European Patent Court, with small number of countries more active in the lobbying process.

• Data collected during the “Venice Forum”, (EPLAW and EPO meeting) in Venice (Oct. 2009) and online (Nov./Dec. 2009).

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The judges• Heterogeneous set of judges:

– Not all specialized in Intellectual Property– Highest court judges mixed with lower court judges– Career structures differ in European countries– Different legal cultures

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The network analysis

• Three personal networks measured among I.P. European judges participating in the Venice meetings:

1. Reading other judges’ work [Question : Please check the names of colleagues whose work (decisions, articles) you have directly READ]

2. Personal discussion [Question : Please check the names of colleagues with whom you have personally and DIRECTLY DISCUSSED I.P. matters]

3. Explicit reference to other judges’ decision [Question : Please check the names of colleagues whose work you REFER TO EXPLICITLY in your own decisions]

• Data were entirely anonymized

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The questionnaire on patents

• Short questionnaire about:

1. Personal assessment of inventive step (Q1-3) 2. Personal determination of the scope of protection (Q4)3. Involvement of technical experts (Q5-7)4. Personal rules and opinion (Q8)

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RESULTS


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Results network analysis Learning across borders as visualized by three networks

• Discussion network is denser than Reading network, which is denser than Explicit Reference network

• Therefore learning across borders currently occurs more through discussion than through reading, and more through reading than through explicit reference to work of other judges

• Dutch, UK and German judges display the highest activity in all three networks (reading, discussion and explicit reference)

• Italian and French judges also display high activity in reading and discussion network, but not in explicit reference network

• Note that explicit reference to work of other judges is forbidden in some countries (notably France)

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• A small subset of highly central judges facilitate learning through personal discussions, through reading other judges’ work, and through explicit citation of other judges’ work

• Highly central judges facilitate the learning process and increase transparency by referring to decisions of foreign courts. They tend to be UK, German and Dutch judges

Results network analysis

Highly central juges

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Network centrality

• Pictures on the following pages visualize Reading, Discussion and Reference networks

• Countries are coded by colours, and circle size represents each judge’s centrality

• Highly central judges (identified by symbol *) are those mostly cited by colleagues (i.e. number of citations above the 90th percentile in at least 2 networks)

• To protect anonymity of respondents, individuals who are single representatives of their country in this group are labelled X

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Reading network

* : Highly central judges

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Discussion network


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Reference network


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Results Questionnaire on patents


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Results questionnaire Assessment of inventive step

Q1. When assessing inventive step, do you – explicitly or tacitly – apply the same method as the Examining Divisions and Boards of Appeal of the EPO (Problem-and-Solution approach)?

Yes 75,8% No 15,1% Sometimes 9,1Q2. Are decisions of foreign courts in relation to the same patent you are dealing

with relevant?

Yes 91,0% No 3,0% Sometimes 6,0Q3. Do you refer in your decisions to decisions of foreign courts?

Yes 66,7% No 27,3% Sometimes 6,0

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Results questionnaire

Determination of scope of protection

Q4a. Do the statements of the applicant during the grant procedure before the European Patent Office play any role when determining the scope of protection?

Yes 63,6% No 30,3% Sometimes 6,0

Q4b. If yes or both, could this only lead to a limitation of the scope?

Yes 65,4% No 34,6%

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Involvement of technical expertsQ5. Do you involve independent technical experts to report on Inventive step?

Yes 60,6% No 39,4%Q6. Do you involve independent technical experts to report on Scope of

Protection?

Yes 48,5% No 51,5%Q7. Do the parties have the opportunity to comment on the reports of the

experts?

Yes 95,5% No 4,5%

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Personal ruleQ8a. Which rule do you apply?

A. Patents are exceptions to the freedom of copying. Therefore, the validity of patents and their scope of protection should be critically assessed.

B. Patents are granted as a reward to the contribution of the inventor to the technological development. Therefore, the patent holder is entitled to a mild assessment of the validity of the patent and a broad scope of protection.

A 45,5% B 27,3% Both/In between 21,2%

Q8b. Are you happy with it personally?

Yes 74,1% No 11,1% Both/In between 14,8%

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Conclusions on issues• Strong level of consensus among Venice I.P. judges on assessment

of inventive step (problem-and-solution approach, relevance of foreign decisions)

• Strong diversity in terms of use of judicial discretion in balancing “patent as exception” and “patent as reward”

• Learning across border does not mechanically lead to uniform positions

• Risk remains that differences (in the methods of assessment of inventive step, of determination of scope of protection, and of involvement of technical experts) may lead to diverging decisions

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Relationships between networks and issues


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Highly central judges in this learning process have different positions than most IP judges

with respect to five issues

• They …– Tend to use problem-and-solution approach less systematically– Refer to decisions of other courts more often– Consider more often that “statements of applicant during grant

procedure play a role when determining the scope of protection”– Involve less often independent technical experts to report on

inventive step– Involve less often independent technical experts to report on

scope of protection

• Figure on next page illustrates these differences

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Differences between highly central judges vs. all other judges regarding answers to questionnaire

% of judges responding "yes"

020406080

100

Q1 - Same assessment method asEPO

Q3 - Refers to foreign court

Q4 - Statements of applicantbefore EPO play a role in scope

of protection

Q5 - Involves technical expert forinventive steps

Q6 - Involves technical expert forscope of protection

Q8 - Patents are exceptions tothe freedom of copying (vs.

granted as a reward)

Judges with highest centralityAll other judges

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Does learning through networks across borders lead to convergence?

• Figure on next page shows judges perceived by their Venice I.P. peers as closest to future EU Uniform position

• Countries are coded by colours, and circle size represents each judge’s centrality

• Highly central judges (identified by symbol *) are those mostly cited by colleagues (i.e. number of citations above the 90th percentile in at least 2 networks)

• To protect anonymity of respondents, individuals who are single representatives of their country in this group are labelled X

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Judges perceived by their peers as closest to future EU Uniform position



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• If judges follow highly central colleagues, does it mean convergence towards the positions of the latter?

• Judges perceived by their Venice IP peers as closest to a future EU Uniform position, if any, tend to be Dutch, German, and Italian

• Consensus on the EU Uniform Position thus remains uncertain.

• Learning through networks across borders does not necessarily, by itself, lead to convergence and to uniform positions.


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Summary of results• Learning through reading, discussion, and reference networks

across borders does indeed take place among this group of I.P. judges

• Some countries are also more active in the learning process• This learning process is driven, to some extent, by a small subset of

highly central judges who are highly central in all three networks• Some issues are already consensual, others not. The learning

process does not mechanically lead to convergence and consensus• On average, highly central judges have a different position profile

than the other judges• Highly central judges in this group increase transparency by

referring to decisions of foreign courts• Highly central judges are also considered by their peers to be

closest to future EU Uniform position

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Limitations of this study

• German judges are under-represented in the survey compared to the number of German judges attending the meetings

• This group of strongly committed I.P. judges is not necessarily representative of all judges making I.P. decisions in Europe

• Learning across borders, as described here, might be quite specific to I.P. law (especially patents) since, contrary to other areas of law, this domain is quite internationalised already

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Many thanks to all the judges who participated in the survey

Please send comments, if any, [email protected]


mailto:[email protected]

LOTF2011 | Emmanuel Lazega

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