In the fast lane: new IP proceedings
Presently the Market Court is dedicated to matters of marketing law, competition law and public procurement. The specialised IP rights trial division will be established with the Market Court for the purpose.
In the future, IP disputes and invalidation cases, as well as appeals on decisions of the National Board of Patents and Registrations (NBPR), will be heard by the Market Court exclusively. The NBPR’s Board of Appeal will be abolished. The general district courts will continue to have competence for criminal cases.
The Market Court will issue precautionary measures, including interlocutory injunctions, and will hear appeals against domain name decisions of the Finnish Communications Regulatory Authority regarding the granting of domain names for the .fi root.
Most IP rights cases will be overseen by three legally qualified judges, each preferably with experience in IP issues (the nomination process for new, additional judges is still pending). In patent and utility model cases, there will be a specialist engineer with a judge’s capacity and voting right on the decision. Appeals against NBPR registration decisions on patent and utility models will be considered by one legally trained judge and two specialist engineers.
Fast-track IP proceedings and increased expertise
The overall objective is, first and foremost, to improve the efficiency of IP judicial proceedings. Administrative appeals against the NBPR’s registration or opposition decisions and IP infringement disputes will be handled by the same instance.
The goal is to speed up the proceedings and reduce expenses. However, from the IP prosecution point of view the costs may increase, as in future the prosecution appeals procedure will be significantly different to the procedure of the NBPR’s Board of Appeal.
The overall objective is to improve the efficiency of IP judicial proceedings. Administrative appeals against the NBPR's registration or opposition decisions and IP infringement disputes will be handled by the same instance.
At the Market Court, there will be a full preparation phase in IP prosecution proceedings, including possibly also an oral preparation meeting. Where necessary, the Market Court may also conduct an oral main hearing. Witnesses and experts may be heard in the oral main hearing. The Market Court may issue preclusion orders to the parties. Statements of reasons about decisions of the Market Court should be more comprehensive than those of the Board of Appeal.
One aim of the court reform is that civil IP rights matters will be handled by judges with a deeper IP expertise compared to the present situation where cases are decided in the general district courts. Upon introduction of the new court the same judges will handle disputes relating to prosecution as well as contentious IP matters. The main desire of the legislator is that the centralisation of IP matters will ensure more uniform, predictable and good quality decisions.
Restricted possibility of appeal
The opportunity to appeal against the decisions of the Market Court is restricted. Market Court decisions on contentious IP matters are appealed to the Supreme Court and the decisions of the court on prosecution matters are appealed to the Supreme Administrative Court. Both are subject to obtaining leave to appeal.
In the future, most of the civil IP cases will be considered only by one court instance, as leave to appeal is granted by the Supreme Court for a very limited number of cases. In general, less than 10 percent of leave to appeal applications are accepted.
One significant consequence of the appeal restriction is that witnesses can be heard only once. This certainly increases the risks involved in IP litigation. The risks of erroneous final judgments increase.
The litigants in IP cases need to prepare the cases even more exhaustively so that all relevant, and even at first sight not so relevant, aspects are covered. In order to lessen and eliminate uncertainties that often relate to the witness hearings, the availability and quality of witnesses need to be outlined and assessed in a thorough manner. It must be kept in mind throughout any IP litigation process, that there will in practice be no appeal proceedings available.
A judgment of the Market Court becomes enforceable in an expedient manner and can be enforced immediately after the judgment, unless the Supreme Court orders a stay of the enforcement.
Whether the faster speed of proceedings and higher expertise of judges should cover the risk factors associated with the new ‘one-stop shop’- type of proceedings remains an open issue until the Market Court has demonstrated its competence to meet the objectives of the reform.
Petri Eskola is a partner at Backström & Co Ltd. He can be contacted at: petri.eskola@backstrom.fi.
