To what extent are decisions from other fora/jurisdictions relevant or influential, and if so, are there any particularly influential fora/jurisdictions?
The Australian legal system is based on the common law, and Australian courts consider decisions of UK courts, as well as decisions of other common law jurisdictions such as Canada and New Zealand. Decisions of US courts are sometimes considered. However, there is no requirement for Australian courts to follow decisions of any foreign court. Decisions of foreign courts are likely to be more influential where there is no relevant precedent in Australian law. Where an Australian Court has a similar legal test on a question such as novelty, a foreign decision on an equivalent patent can be influential, but not binding, in an appropriate case.
Since German law and legal tradition are similar and due to the fact that Germany is a far larger jurisdiction with case law on many more questions, Austrian courts and lawyers often use German case law and literature. This applies both in cases where no precedent in national law exists and with regard to decisions on foreign equivalents of a patent.
In patent matters, British, Swiss and Dutch courts are generally highly respected in Austria. With regard to questions of validity, the decisions of the EPO are of course also highly relevant and negative decisions of the EPO in opposition proceedings against European patents are binding throughout Europe.
Austrian case law states that foreign decisions on equivalents of a patent are not binding in Austria but their reasons may be submitted as evidence (Austrian Supreme Court from 19.11.2009, 17 Ob 24/09t - Nebivolol).
These decisions can be persuasive. Decisions from the EPO or the PTAB are often used as evidence to convince the courts.
Canadian courts, including the Federal Court, will consider decisions from other foreign jurisdictions. The level of influence afforded to a foreign decision will depend in part on similarities between the law of Canada and the law of the foreign jurisdiction with respect to the issue at hand, even where there is no precedent in Canada law for a certain issue.
Foreign decisions, including with respect to equivalents of a Canadian patent, will not typically be binding on Canadian courts.
Whether in a situation in which the foreign decision relates to a relevant issue for which no precedent in national law exists or in a situation in which decisions exist in respect of foreign equivalents of a patent in suit, the Chinese court would not refer to the decisions from foreign fora /jurisdictions.
EPO decisions are formally only relevant once final.
Foreign decisions are not formally relied on by the courts or the IPO.
Even first instance IPO decisions are disregarded by the court.
There is not a real impact or influence from decisions of other fora/jurisdictions on French courts, and it is even more so, as French courts are not bound by national prior decisions on the same issues, even of a higher-level jurisdiction.
According to the German Supreme Court German courts must consider but are not bound by decisions of the European Patent Office or courts of Member States of the European Patent Convention 1973 if these decisions deal with essentially identical issues to those brought before the German court.
In practice this means that the courts will read and consider decisions from abroad but will not necessarily follow them.
Greek courts are not bound by court decisions from other jurisdictions. However, a clear tendency of the courts is observed to take into consideration decisions in similar cases or relevant issues where there is no national precedent. The case-law that is more often taken into consideration is that of the Court of Justice of the EU, as well as of the German, French and UK patent courts.
It is upon the discretion of the Judges to consider decisions from other fora/jurisdictions relevant. They are not bound to follow them. In case there is lack of precedence or law on a certain legal aspect, Courts do consider the opinions of foreign courts although the same is not binding of them.
Judgments of the UK courts, in particular, have persuasive effect in Ireland.
In Ranbaxy, Clarke J stated at paragraph 51 that, having regard to the extremely similar legislation in Ireland and the UK, and the states’ common adherence to the EPC, the judgments of the UK courts in this field have persuasive effect, as may judgments of other common law courts. In particular, he stated:
“…it is important to note that, while the broad scope of patent law has many similarities from one common law country to the next, there are, undoubtedly, some differences in the established approach in the respective jurisdictions. In particular, the underlying statutory basis does differ. Ireland and the United Kingdom have, of course, the European Patent Convention in common, and, as was pointed out by counsel for the plaintiff’s, the Patents Act 1992, is in very similar terms to the equivalent United Kingdom legislation and is clearly closely modelled on the United Kingdom Patents Act1977. This is hardly surprising, as both the United Kingdom and Ireland are signatories to and have ratified the European Patent Convention. It is fair to state that less caution needs, therefore, to be exercised in considering the application of judgments of the courts of the United Kingdom from other common law countries.
In those circumstances, it seems to me, that while it would not be appropriate to ignore the jurisprudence of other common law countries, it is the decisions of the United Kingdom courts that require most attention. The broad approach to the construction of patents is, of course, at least similar. Unless there is a material statutory difference or an established variation in the applicable jurisprudence, it does seem that the non-United Kingdom common law authorities are also persuasive in this context. However, for the reasons I have set out, caution should be applied and it should not be assumed that all relevant factors are necessarily the same.”
In dealing with the standing of foreign judgments which addressed the same patent and issues as before the Irish court, Clarke J stated at paragraph 54 that:
“The principle of the comity of courts requires that the courts in one jurisdiction should not lightly depart from a decision on the same issue made by a court of competent jurisdiction in another country which had to deal with that issue as part of litigation properly under its consideration. Thus, for example, where the courts in one jurisdiction have interpreted a contract in a particular way and where the same contract comes to be interpreted, in a separate dispute between the same or similar parties, in the courts of another jurisdiction, then the comity of courts requires that the interpretation of the contract in the second proceedings should not lightly depart from the interpretation given to the same contract in the first proceedings.”
Clarke J held that “subject to the caveats relating to differences in statutory law, jurisprudence, the patents themselves and the evidence…[it is correct] to pay appropriate regard to the international decisions in the related cases” in those particular proceedings.
However, as Clarke J. noted in Ranbaxy, differences in evidence before the Irish Court may warrant deciding that it ought to depart from a foreign judgment on the same patent. Thus, in Re Glaxo Group  IEHC 277, Charleton J in the High Court, whilst ultimately reaching the same conclusion as the English Court that the invention was obvious, noted that before the Irish court;-
“substantially different facts were argued and new witnesses called [with the result that it would have been impossible, notwithstanding my respect for Pumfrey J [in the English High Court] and for the courts in the neighbouring kingdom, to proceed towards a conclusion on the correctness of the decision in the previous litigation without examining this evidence in detail and with an open mind. Since a finding on that issue could change the other aspects of evidence which may have been common between this case and that tried in the United Kingdom, a complete re-evaluation of all of the evidence was required in the present case.”
The general approach is that courts may have international jurisdiction to hear a foreign patent action, but will decline to exercise jurisdiction to consider infringement or validity of foreign patents based on forum non conveniens. On the other hand, in appropriate circumstances, courts will consider questions of entitlement and ownership in respect of foreign patents and grant Mareva injunctions and even in personam assignment orders covering foreign patents.
The general approach is also that courts will grant an anti-suit injunction only in extreme and rare cases. As a general rule, a patent anti-suit injunction will only be granted if it is proved that the foreign patent action is vexatious, was filed with malice or contradicts a procedural agreement between the parties.
With respect to subject matter and local jurisdiction in patent matters, see answer to Question 1.
While our courts remain fairly independent in the face of foreign judgments, they are inclined to consider and potentially draw guidance from decisions issued in parallel litigation abroad. UK, Germany and the Netherlands are perceived as the most important jurisdictions for patent matters.
In theory, decisions from other fora/jurisdictions are irrelevant to patent actions in Japan and have no influence on patent actions in Japan; however, from a practical viewpoint, for example, when the claims of a patent in another forum/jurisdiction corresponding to a Japanese patent are substantially the same as the claims of such Japanese patent, the relevant decision from the other forum/jurisdiction essentially may exert an influence on the relevant patent action in Japan. Therefore, the content of such decisions from other fora/jurisdictions may be submitted as evidence in Japanese litigation proceedings.
Case-law from the EPO is regarded as highly relevant and influential for the interpretation of the Norwegian Patents Acts. Also decisions from the higher Courts of other Europeans countries, in particular Denmark, Sweden,, Germany, Netherlands and the UK, are regarded as relevant and influential for the interpretation of the Norwegian Patent Acts.
Decisions from other jurisdictions regarding foreign equivalents of the patent in suit may also be regarded relevant and influential for the concrete assessment. This is in particular true for decisions from other European Countries and especially from Denmark, Sweden, Germany, Netherlands and the UK.
In general, Polish courts and the Patent Office tend to emphasise their independency from foreign judicial bodies. The Supreme Administrative Court has, however, ruled that in case of a relevant EPO decision (particularly but not limited to a decision concerning foreign equivalent of the patent in suit), the Patent Office should explain in detail why its decision differs from the EPO’s view.
On the other hand, Polish courts pay certain attention to foreign judgements and in case of differing views from several jurisdictions may take into account a decision from the most similar legal system (especially from German courts).
In general though, Polish courts are very independent in ruling patent cases.
VdA: Although not binding, at least some weight will be given by Portuguese Courts to decisions in other member states (particularly in in parallel proceedings).
The Russian case law provides that the validity and enforcement of Russian or Eurasian patents in Russia is absolutely independent from any analog patent proceedings. Parties may refer to positive decisions in foreign jurisdictions, judges even may look to the arguments of the foreign fora, but never refer to this in their decisions.
Given that patent law is territorial, it has been acknowledged by the Singapore Courts that an adjudication on patent rights is predicated upon not only the applicable regulatory framework and practices, but also the evidence presented as well as the submissions made to the tribunal concerned. Accordingly, care must be taken when referring to and/or relying on another apparently similar decision on the “same” issue from another jurisdiction.
The above notwithstanding, general principles of law stated by Courts in other Commonwealth jurisdictions (UK in particular) are typically considered persuasive by the Singapore Courts. As the Singapore PA is modelled after the UK Patents Act 1977, cases that apply the UK Patents Act 1977 would be persuasive in the Singapore Courts. An example of this is the endorsement of the “four-step Windsurfing approach” in relation to the assessment of obviousness as a ground of invalidity of a patent.
Decisions from other fora/jurisdiction will be taken into account on a case-by-case basis and whether they will be taken into account is solely at the court’s discretion. There are no particularly influential fora/jurisdictions.
Swedish courts shall consider EPO practise when applying Swedish patent law. Where no precedent exists for an issue, decisions from other jurisdictions may be considered, particularly if there is case-law to the same effect in several other EPC jurisdictions. The exact impact of foreign decisions is difficult to assess since the Swedish courts rarely discuss decisions from other jurisdictions in the reasons given in the judgment.
Foreign decisions are particularly important if Swiss law provisions have been enacted in order to harmonize Swiss and EU legislation. By example, the Swiss SPC legislation closely follows the EU legislation. With respect to SPCs for combination products, the FSC recently abandoned the infringement test applied so far and will in the future apply the CJEU’s disclosure test.
The Swiss courts are generally willing to consider the decisions of foreign courts issued in parallel proceedings, especially in proceedings involving European patents, as there is significant harmonisation. These foreign decisions are, however, not binding on the Swiss courts.
For the first instance of a patent infringement proceeding, the IP Court enjoys a non-exclusive jurisdiction. In other words, a patentee is still allowed to initiate a patent infringement proceeding before a district court with proper jurisdiction over the parties/subject matters. In practice, virtually all patentees will choose the IP Court as the forum of patent infringement litigation because the IP Court is an expertized court, better equipped with technical examination officers.
The IP Court has exclusive jurisdiction over patent infringement litigation for the second instance.
As such, the IP Court is the only forum that plays an influential role in patent litigation.
Although a patentee could also request the tariff authority to prohibit goods allegedly infringing a patent from being imported into Taiwan, this mechanism is rarely used by patentees and barely has any influence on Taiwan’s patent practice.
Thai courts are not bound by and do not have to follow decisions from other national or foreign courts. Also, foreign judgments cannot be directly enforced in Thailand.
However, Thai courts may take foreign decisions into account (if they are final and conclusive decisions) as part of evidence in the case if the decisions are directly relevant to the disputed issues (e.g., decisions in respect of foreign equivalents of a patent in suit) or if they provide persuasive authorities on a legal principle that is unclear under Thai law, and for which there is no precedent in Thailand.
The Turkish courts and judges are not bound by the decisions of the foreign courts, even if the foreign precedent relates to the relevant issue or equivalent of the patent subject to dispute. However, since Turkey is party to EPC, the decisions of the European Patent Office influence the Turkish courts to some extent. In other words, it is at the discretion of the IP Court to detain the infringement action in cases where there is post grant opposition proceeding before European Patent Office.
As noted above, Section 130(7) Patents Act states that certain provisions of the Patents Act shall have, as nearly as practicable, the same effects in the UK as the corresponding provisions of the EPC, PCT and the Community Patent Convention (“CPC”).
In relation to the decisions of the EPO, it is also well-established under UK case law that, although not bound to do so, UK Courts “should normally follow the settled jurisprudence of the EPO (especially decisions of its Enlarged Board of Appeal) on the interpretation of the European Patent Convention in the interests of uniformity, especially when the question is one of principle” (Actavis v ICOS  UKSC 15). Accordingly, UK courts will typically have regard to relevant EPO decisions.
Given the nature of the EPC system, local designations of the same European patent are litigated in domestic courts across Europe. The Patents Court has therefore recognised that “the judgments of courts of countries which are members of the EPC do play a role in influencing the decisions of courts of other EPC states considering the local designations of the same European patent”: Pfizer v Roche  EWHC 1520 (Pat).
Given that, at the time of writing, the UK is a Member State of the European Union, the UK courts are currently obliged to refer a question of EU law to the CJEU if there are issues of EU law that are unclear and the referral is necessary for the court to give judgment. The CJEU is “supreme” in matters of EU law, and therefore its case law must be interpreted and applied in the judgments of the English courts when dealing with points of EU law. Due to the limited scope of EU law in relation to patent rights, there are only certain areas in which the jurisprudence of the CJEU is of relevance. Two such areas are (i) the interpretation of the SPC Regulation, in relation to which the Patents Court and has made a number of referrals to the CJEU in recent years, largely due to the lack of clarity in the drafting of its provisions; and (ii) issues of competition law where they interact with issues of patent law, e.g. in cases such as the determination of fair, reasonable and non-discriminatory (“FRAND”) licensing terms (see below).
When the UK leaves the EU on “exit day”, the body of EU law existing at that time will become UK law. This means that, whilst UK courts will no longer be able to make referrals to the CJEU on points of interpretation of that body of law, pre-exit CJEU case law will continue to bind the lower courts, and future CJEU case law is likely to be persuasive when the UK courts come to interpret the same issues.
While there is no obligation under UK law to consider foreign jurisprudence (subject to the abovementioned requirement to follow CJEU case law in certain instances), UK courts may look to foreign jurisprudence if it involves closely related fact, or when considering a new or novel point of law. One such example arose in Unwired Planet v Huawei, the first instance in which the UK courts considered whether it had jurisdiction to grant a global FRAND licence, where the courts considered relevant jurisprudence including from the United States. However, given that the UK is generally considered to have one of the most developed bodies of patent law in the world, it is rarely necessary for the UK courts to look elsewhere for jurisprudence on patent matters.
The United States follows the common law tradition of applying precedent. This means that the federal district courts, CFC, and ITC are bound by decisions of appellate courts, primarily the CAFC. They also generally follow prior decisions within their own jurisdiction. Decisions from other domestic jurisdictions (e.g., federal courts in other states) have persuasive authority but are not mandatory precedent. Decisions from outside the United States can also be noted, but tend to not be influential.
Exceptions include doctrines such as collateral estoppel and res judicata. These doctrines may bind particular parties to findings of law or fact in one jurisdiction to the same findings if the parties try to re-litigate the issues in the same or another jurisdiction.
The interplay between litigation and PTAB rulings on validity is also important. In general, courts are not required to adhere to PTAB rulings that a patent is invalid unless and until the PTAB ruling is final and all appeal rights have been exhausted.
Vietnamese courts are not bound by the opinions of any foreign jurisdictions. However, Vietnamese enforcement officials have been willing to consider foreign opinions for guidance, particularly in areas of law (such as patent litigation) that are not well developed in Vietnam.