LOTF2011 | Emmanuel Lazega

Mapping Transjudicial Dialogue and Learning Across BordersThe Case of European Intellectual Property Judges Assembled at the Venice Forum (2008 and 2009) Survey Report to EPLAW, IPJA and EPO Prof. Emmanuel Lazega, University of Paris-Dauphine Prof. Ton Hol, University of Utrecht Dr. Sam Muller, Director of HiiL Prof. Jan Brinkhof, University of Utrecht Prof. Willem Hoyng, University of Tilburg With the collaboration of Merlin Majoor, Dr. Bald de Vries, Yuki de Vroomen and Daniel Wegen December 30, 2009 1

AcknowledgmentsWe express special thanks to Judge Ernst J. Numann forinspiration and advice.This report is funded by the HiiL’s Highest Courts in anInternationalising World: an Agenda for Dialogue andResearch 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 controversialstatements possibly made in this report. 2

CONTEXT & METHODSSurvey Report to EPLAW, IPJA and EPO 3

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). 4

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 5

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 6

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) 7

RESULTSSurvey Report to EPLAW, IPJA and EPO 8

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) 9

Results network analysis Highly central juges• 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 10

Results network analysis 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 11

Results network analysisReading network : Highly central judges * 12

Results network analysisDiscussion network : Highly central judges * 13

Results network analysisReference network : Highly central judges * 14

ResultsQuestionnaire on patents Survey Report to EPLAW, IPJA and EPO 15

Results questionnaire Assessment of inventive stepQ1. 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. Aredecisions 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 16

Results questionnaire Determination of scope of protectionQ4a. 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 6,0Q4b. If yes or both, could this only lead to a limitation of the scope? Yes 65,4% No 34,6% 17

Results questionnaireInvolvement 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% 18

Results questionnaire 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% 19

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 20

Relationships between networks and issues Survey Report to EPLAW, IPJA and EPO 21

Highly central judges in this learning processhave 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 22

Differences between highly central judges vs. all other judges regarding answers to questionnaire % of judges responding "yes" Q1 - Same assessment method as EPO 100 80 Q8 - Patents are exceptions to 60 the freedom of copying (vs. Q3 - Refers to foreign court granted as a reward) 40 20 0 Q4 - Statements of applicant Q6 - Involves technical expert for before EPO play a role in scope scope of protection of protection Q5 - Involves technical expert for inventive steps Judges with highest centrality All other judges 23

Does learning through networksacross 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 24

Does learning through networks across borders lead to convergence?Judges perceived by their peers as closest to future EU Uniform position : Highly central judges * 25

Does learning through networksacross borders lead to convergence?• 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. 26

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 27

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 28

Many thanks to all the judgeswho participated in the survey Please send comments, if any, to emmanuel.lazega@dauphine.fr 29 Survey Report to EPLAW, IPJA and EPO

LOTF2011 | Emmanuel Lazega

by HiiL on Jul 08, 2011

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LOTF2011 | Emmanuel Lazega — Presentation Transcript