Ask an expert: the role of court-appointed experts in patent cases

In Finland, there is concern that some court-appointed experts have been allowed to overstep their authority in influencing cases, says Petri Eskola.

Patent litigation often involves complex judicial and technical issues. Courts with jurisdiction over patent disputes have to be capable of coping with both aspects. In many countries, only special courts or general courts with specific expertise have the competence to hear patent disputes.

To deal with the technical issues in litigation, the use of experts is essential in most cases. This is as much for the benefit of the court as the parties to the dispute. Both the court and the parties are entitled and expected to use outside technical expertise, whereas the court should know the law in accordance with the principle of jura novit curia.

In Finland, the District Court of Helsinki is the first instance court with sole jurisdiction over patent cases. The court is competent to hear proceedings over proper title to the invention for which a patent is sought and invalidation or transfer of a patent.

The court is also competent to rule on the grant of compulsory licences, determination of new conditions for or revocation of such licences, and assessment of compensation where compulsory licence is granted or rights are based on bona fide prior use. Finally, disputes concerning patent infringement or declaratory judgments fall within the sole jurisdiction of the court.

The court sits with three judges in all patent cases, whereas the vast majority of other civil proceedings are handled by just one presiding judge.

Article 66 of the Patents Act provides that the court shall appoint, in all patent proceedings, two technical experts. The task of the court-appointed experts is to give their views on the matters submitted to them by the court; consequently, their views are entered in the court record. As the court record is public, the experts’ opinions are also public, unless the court decides on secrecy at the request of a party. Secrecy may be granted if the opinion contains the business secrets of either party.

The court-appointed experts are not actual members of the court— they do not take part in the decision-making. However, they are entitled to pose questions to the parties and the witnesses during the main hearings.

The technical experts are chosen from a list of preelected experts for the patent cases. The experts are elected by the court each calendar year for a one-year term. Some experts have served in this capacity for many consecutive years.

There have been approximately 100 experts in this pre-elected pool of court experts in the last few years, representing various areas of technology.Before electing and appointing experts to the pool, the court requests the opinion of the Technical Research Centre of Finland.

Many of the appointed experts are top-level scientists in their field, researchers or even professors. An elected expert may not refuse an appointment without statutory justification. Before taking up his appointment, an expert is required to take the prescribed oath.

Experts are paid a reasonable fee for each case as laid down by the court, together with compensation for travelling expenses as prescribed by the government.

In some specific, narrow areas of technology, it sometimes occurs that all the pre-elected experts have conflicts of interest with either of, or both, the parties to the dispute. This might cause a delay in setting up the legal composition of the court, as suitable experts will need to be picked from outside the pool of the pre-elected experts. These kinds of ad hoc experts take on a similar role to ordinary experts, when they are nominated. Practical problems might appear if both of these experts have no previous experience or knowledge of patents or patent proceedings. However, as the role of the experts is limited to purely technical matters, this should not be a major problem. Before the main hearing, an elected expert is also required to take an oath.The fact that many of the court-appointed experts are top-level researchers or may even be professors in the field concerned can be problematic.

For instance, in patent invalidation cases, where the views of the person skilled in the art are primarily called for in the decision-making, the high academic level of court-appointed experts might, in some cases, lead to an unjustifiably high threshold for establishing inventiveness. It might be difficult for experts with aboveaverage technical skills and knowledge to view the relevant technical issue as if they were a professional with average technical knowledge.

According to the Patents Act, the experts should specifically base their statement on questions posed by the court. However, in practice, the court very seldom formulates specific questions for the experts. Instead, experts have the freedom to give their opinions on cases broadly and as they see fit. This means that, in many cases, the experts not only express their views on purely technical matters, but also take positions on other issues, whether directly or indirectly.

The presiding judge should explain what he really wants from the experts, guiding them on how to view the case and formulate their opinion. Too often, the most experienced experts have overstepped their remit and taken on a role close to that of the judge, by commenting on purely legalquestions and even expressing their views on the evidence, burden of proof and such legal issues. Clearly, this goes beyond their role as technical experts. Unfortunately, it seems too often as if the court has accepted this behaviour, granting to the experts a remarkable share of the decisionmaking power, which should belong solely to the judges. This is to some extent understandable in cases involving extremely difficult technical issues, but in general, it is deplorable.

There are no technical experts in the courts of appeal in cases where the first instance patent cases are appealed. This is a clear disadvantage, especially in those cases where the most crucial issues relate to purely technical questions and where the court-appointed experts have made erroneous conclusions on the issues. This means that the chances of getting such first instance decisions reversed on appeal are extremely slim.

Nor are there technical experts at the Supreme Court in patent cases. The court has decided only a few patent cases to date. Appeals to the Supreme Court require leave to appeal, which is rarely granted. Over the past 25 years, there have been just two patent cases decided at the court. For those patent cases where the technical issue is crucial, the extremely low number of cases is probably due to the fact that the Supreme Court could not thoroughly consider the technical aspects and that the role of the Supreme Court is to give legal precedents, not to review issues relating to evidence as such.

Petri Eskola is a partner at Backström & Co Ltd. He can be contacted at: petri.eskola@backstrom.fi