Law of the Future 2011 23 & 24 June 2011, Peace Palace, The Hague, The Netherlands title: Mapping Transjudicial Dialogue and Learning Across Borders By: Emmanuel Lazega Highest Courts Workshop www.lawofthefuture.org

1. Mapping Transjudicial Dialogue
and Learning Across Borders
The 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
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2. Acknowledgments
We 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.
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3. CONTEXT & METHODS
Survey Report to EPLAW, IPJA and EPO 3

4. 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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5. 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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6. 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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7. 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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8. RESULTS
Survey Report to EPLAW, IPJA and EPO 8

9. 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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10. 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
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11. 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
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12. Results network analysis
Reading network
: Highly central judges
* 12

13. Results network analysis
Discussion network
: Highly central judges
* 13

14. Results network analysis
Reference network
: Highly central judges
* 14

15. Results
Questionnaire on patents
Survey Report to EPLAW, IPJA and EPO 15

16. 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 9,1
Q2. Aredecisions of foreign courts in relation to the same patent you are dealing
with relevant?
Yes 91,0% No 3,0% Sometimes 6,0
Q3. Do you refer in your decisions to decisions of foreign courts?
Yes 66,7% No 27,3% Sometimes 6,0
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17. 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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18. Results questionnaire
Involvement of technical experts
Q5. 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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19. Results questionnaire
Personal rule
Q8a. 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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20. 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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21. Relationships between
networks and issues
Survey Report to EPLAW, IPJA and EPO
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22. 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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23. 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
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24. 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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25. 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

26. Does learning through networks
across 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.
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27. 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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28. 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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29. Many thanks to all the judges
who participated in the survey
Please send comments, if any, to
emmanuel.lazega@dauphine.fr
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Survey Report to EPLAW, IPJA and EPO