Promoting transnational dialogue among judiciaries
The annual WIPO Intellectual Property Judges Forum aims to provide a platform for judges from across the globe to exchange their expertise on the most pressing intellectual property (IP) challenges raised by accelerating innovation and the increasingly transnational use of IP.
The 2024 WIPO Intellectual Property Judges Forum was held on October 9 and 10, 2024.
The WIPO Intellectual Property Judges Forum is an annual event organized by the WIPO Judicial Institute as part of the Organization’s work with the judiciaries. In 2024, the Forum brought together over 435 judges from 101 countries and six regional courts, to engage with their global peers.
Rapidly evolving technologies, such as artificial intelligence (AI), raise questions that go to the very heart of IP law. With many courts having concluded that existing patent law requires a human inventor, they will soon be asked to assess just how much human intervention is required for patentability. Realistic AI-generated human images and likeness also raise questions regarding personality/publicity rights and trademarks. In the area of copyright, questions have arisen from the use of generative AI systems, both in terms of the input used by AI and the output it produces. The fast-moving technological environment also creates challenges for defining and interpreting licensing terms. Panelists in this session will share insights on recent court cases on these matters.
Patentability of AI-assisted inventions
Patentability of AI technologies
Registrability of AI-generated human portraits as trademarks
Generative AI and training data containing copyright-protected works
Licensing IP rights in a rapidly changing technological environment
Moderator and Speakers:
Moderator: Caroline Somesom Tauk Judge, Regional Federal Court of the Second Region, Rio de Janeiro, Brazil
Scott Boalick Chief Administrative Patent Judge, Patent Trial and Appeal Board, United States Patent and Trademark Office, Alexandria, United States of America
Session 2: Standard Essential Patents (10.45 – 12.00)
Litigation surrounding SEPs has gradually increased over time and expanded into new jurisdictions. Beyond applying traditional IP concepts, courts now grapple with the appropriate application of contract and competition law in these complex cases which also include questions of patent validity, patent infringement, and fair, reasonable, and non-discriminatory (FRAND) defenses. This panel will discuss these concepts as the speakers provide insight into their experiences with SEP cases. There will also be a discussion on how to determine appropriate FRAND rates, how to determine appropriate jurisdiction and remedies, and how to deal with confidentiality.
Min Eun-Joo Director, WIPO Judicial Institute, IP and Innovation Ecosystems Sector, WIPO
Session 3: Confidential Information and Trade Secrets (14.00 – 15.15)
The unique characteristics of trade secrets give rise to distinct challenges in disputes involving confidential information that may qualify as a trade secret. In addition to issues of evidence, defining protectable confidential information, breach of confidence claims, civil versus criminal enforcement, and remedies, the increasing digitalization of the economy requires courts to resolve issues of confidentiality and trade secret management in the context of the online environment. This panel will address the experiences of various jurisdictions in adjudicating cases of confidential information and trade secrets, as informed by recent judgments.
Evidentiary issues, including proof of sound trade secret management
Requirements for trade secret protection
How to assess breach of confidence claims
Criminal versus civil enforcement
Remedies for trade secret infringement
Confidential information and trade secrets in the online environment
Moderator and Speakers:
Moderator: Jimmie V. Reyna Circuit Judge, U.S. Court of Appeals for the Federal Circuit, Washington, D.C., United States of America
Max Barrett Justice, High Court, Dublin, Ireland
Dedar Singh Gill High Court Judge, Supreme Court, Singapore
Mahube Molemela President, Supreme Court of Appeal, Bloemfontein, South Africa
Session 4: Strength of Trademarks: Weak Elements and their Enforcement (15.45 – 17.15)
Trademark holders are endowed with exclusive rights to regulate specific uses of their signs in the marketplace, in order to preserve their essential role in distinguishing goods and services and preventing consumer confusion. Trademarks with a low degree of distinctiveness may be susceptible to challenge and require nuanced analysis of their scope of protection and likelihood of confusion. This panel will explore cases from various jurisdictions addressing the complexities associated with maintaining and enforcing trademarks with weak distinctive character.
Assessing distinctiveness
Descriptive terms and acquired distinctiveness
Assessing likelihood of confusion for trademarks with low distinctiveness or non-distinct elements
Competition considerations
Evidentiary considerations
Moderator and Speakers:
Moderator: Sven Stürmann Chairperson of the Second and Third Boards of Appeal; President-Elect, Boards of Appeal, European Union Intellectual Property Office, Alicante, Spain
Andres Álvarez Piñones President, Industrial Property Tribunal, Santiago, Chile
Angela Furlanetto Justice, Federal Court of Canada, Ottawa, Canada
Zeliha İnce Judge, 3rd Intellectual and Industrial Rights Court, Ankara, Türkiye
Nadia Kangaloo Puisne Judge, High Court Court of Justice, Port of Spain, Trinidad and Tobago
Krystyna Kowalik-Bańczyk President, Seventh Chamber, General Court of the European Union, Luxembourg
Gunel Sevdimaliyeva Judge, Baku Administrative Court, Azerbaijan
Group photo to be followed by reception, hosted by WIPO Director General Daren Tang (17.15)
Day two – October 10, 2024
Session 5: Copyright Exceptions and Limitations (9.00 – 10.30)
The copyright system permits certain flexibilities regarding granted rights, enabling the use of protected works without the rightsholder's consent and with or without the requirement for compensation. These vary from country to country for diverse beneficiaries and uses. Additionally, with the development of new technologies, the question of how these flexibilities apply in the online environment is increasingly relevant. In this session, the panelists will discuss the challenges of applying these to real-life situations and will provide insights on recent cases decided in their jurisdictions.
Requirements for copyright exceptions and the conditions for possible free uses of works
Defense of fair dealing
Safe harbors for online service providers
Moderator and Speakers:
Moderator: Agnieszka Gołaszewska Judge, Court of Appeal, VII Department of Commercial and Intellectual Property Law, Warsaw, Poland
Nehad Al Hussban President, Court of First Instance, Amman, Jordan
Malik Chapuis Judge, Third Chamber, First Instance Court of Paris, France
José Carlos Costa Netto Judge, State Court of São Paulo, Brazil
Rebecca Ellis Justice, Court of Appeal, Wellington, New Zealand
Olayinka Faji Justice, Federal High Court, Lagos, Nigeria
Thusitha Dewapriya Gunasekera Judge, Civil Appellate High Court, Mount Lavinia, Sri Lanka
Session 6: Evolving Approaches to Permanent Injunctions (11.00 – 12.15)
Permanent injunctions are coercive remedies commonly sought in IP disputes to halt infringing acts and safeguard the rights of IP holders. This session will delve into the dynamic landscape surrounding permanent injunctions, shedding light on the evolving approaches shaping their application.
Scope, conditions and content of permanent injunction orders
Defenses against injunctive relief
Limiting factors, such as competing interests, proportionality concerns and the exercise of judicial discretion
Legal burden and judicial standards
Moderator and Speakers:
Moderator: Jussi Karttunen President, Market Court, Helsinki, Finland
Stephen Burley Justice, Federal Court of Australia, Sydney, Australia
Luis Antonio Camargo Vergara Judge, Third Tribunal Specialized in Competition and Intellectual Property, First Judicial District, Panama City, Panama
Sujin Janepanitpong Presiding Judge, Central Intellectual Property and International Trade Court, Bangkok, Thailand
Michael Manson Justice, Federal Court of Canada, Ottawa, Canada
Ibrahima Sarr President, First Instance Court, Gossas, Senegal
First Year of the Unified Patent Court (12.15 – 12.45)
Rian Kalden
Presiding Judge, Second Panel of the Court of Appeal, Unified Patent Court, Luxembourg
Lunch Break (12.45 – 14.15)
Session 7: Judicial Reform: Exploring the Case of Specialized Judiciaries (14.15 – 15.30)
There are growing efforts to reform judicial structures to meet the challenges of contemporary IP litigation. These include the establishment of stand-alone IP courts or specialized IP chambers, the designation of IP judges within courts, and the introduction of specific IP procedural rules. In this session, judges from diverse jurisdictions will offer insights into the specialized features introduced in the adjudication of IP disputes. They will introduce the scope, type, and volume of cases handled by their courts, and delve into the respective IP procedural frameworks including case management strategies and rules of evidence. The discussion will highlight the benefits and challenges associated with adjudicating in a specialized IP court.
Specialized rules of procedure for IP disputes
Specialized judiciaries with regional jurisdictions
Judicial reform to enhance the efficiency of IP adjudication
Moderator and Speakers:
Moderator: Ángel Galgo Peco
President, Chamber No. 32, Court of Appeal of Madrid, Spain
Ingo Beckedorf
Deputy President, Boards of Appeal of the European Patent Office, European Patent Organisation, Haar, Germany
As the world becomes increasingly globalized and interconnected, the implications of national IP proceedings are likely to transcend national borders. Various challenges may accompany cross-border proceedings, including difficulties in obtaining evidence held outside the local territory, or in finding infringement when the infringing act is partially undertaken outside the local territory. Further questions arise when remedies have impact in jurisdictions beyond the local territory. In this session, geographically diverse panelists will present insights gained and lessons learned from adjudicating IP disputes with cross-border elements, making reference to recent cases and examining whether decisions rendered in one jurisdiction influence decisions in other jurisdictions.
Obtaining evidence held outside the local territory
Finding infringement when (part of) the infringing act is undertaken outside the local territory
Damages for extraterritorial losses
Remedies that have impact outside the local territory
Do decisions rendered in one jurisdiction influence decisions in other jurisdictions?
Moderator and Speakers:
Moderator: Maria Rowena Modesto-San Pedro Associate Justice, Court of Tax Appeals, Quezon City, Philippines
Daniel Alder Judge, Federal Patent Court, St. Gallen, Switzerland
Scott Boalick Chief Administrative Patent Judge, Patent Trial and Appeal Board, United States Patent and Trademark Office, Alexandria, United States of America
Rian Kalden Presiding Judge, Second Panel of the Court of Appeal, Unified Patent Court, Luxembourg
Richard Meade Justice, High Court of England and Wales, London, United Kingdom
Takemiya Hideko Presiding Judge, 21st Civil Division (Intellectual Property Division), District Court, Osaka, Japan
Court of Justice of the European Union [2024]: BSH Hausgeräte GmbH v Electrolux AB, Case C-339/22, Second Opinion of Advocate General Emiliou
Court of Justice of the European Union (Ninth Chamber) [2022]: IRnova AB v FLIR Systems AB, Case C 399/21
Court of Justice of the European Union (Third Chamber) [2012]: Solvay SA v Honeywell Fluorine Products Europe BV et al., Case C 616/10
Court of Justice of the European Union (First Chamber) [2006]: Gesellschaft für Antriebstechnik mbH & Co. KG v Lamellen und Kupplungsbau Beteiligungs KG, Case C 4/03
Closing (17.15 – 17.30)
Rian Kalden Presiding Judge, Second Panel of the Court of Appeal, Unified Patent Court, Luxembourg; Chair of the WIPO Advisory Board of Judges
Min Eun-Joo Director, WIPO Judicial Institute, IP and Innovation Ecosystems Sector, WIPO
Dinner (Optional) (19.00 – 21.30)
Day three – October 11, 2024
Social Program (Optional)
09.30 – 12.00: World Trade Organization (WTO) guided tour and presentation on TRIPS disputes at the WTO and dispute settlement reform
