China’s first Internet Court

On 18 August, China has officially launched its first “Internet Court” in Hangzhou, which city is known as the Chinese e-commerce capital, and is home to Internet giants such as Alibaba and NetEase. The name “Internet Court” has a two-fold meaning: First, this court specializes in resolving Internet-related cases including disputes regarding contacts of online shopping, services and microfinance loans, Internet copyright disputes and domain name disputes etc. Second, all court proceedings in this court can be conducted via an Internet platform. Located in a normal court building in Hangzhou shared with another local court, the Internet Court is nevertheless ready to accept cases filed electronically from all over the country, to hold online mediations, to examine electronically submitted evidence, to hold oral hearings with litigants via video conference, to deliver judgements and to accept applications for enforcement orders, all via Internet. Continue reading “China’s first Internet Court”

Japan considers introducing a new ADR system with a compulsory license for SEPs

   In April, 2017, Ministry of Economy, Trade and Industry (METI) in Japan revealed a report on a new design of an IP system taking the 4th industry revolution into consideration. The report discloses the possibility of introduction of a compulsory license on SEPs (Standard Essential Patents) in upcoming several years.

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Reverse burden of proof and trade secrets in patent litigation – Part two

 

In my previous post (here), I discussed the reverse burden of proof on an international level and the potential tension which could emerge between the patent and trade secrets regimes in this context. In this post, I will turn the focus to Europe and discuss the regional provisions as well as the relevant provisions of the UPC Agreement.

The Enforcement Directive and the Trade Secrets Directive

There are a few provisions in the Enforcement Directive on confidentiality in court proceedings. The need to preserve confidentiality in intellectual property litigation is recognized in the recital of the directive (Recital 20). In addition, a few provisions (Arts. 6 (2), 7 (1) and 8 (2) (e)) of the directive deal with the protection of confidential information in IP litigation.

The drafters of the directive have recognized the need to protect the confidential information of the adverse party. But what is to be noted is that the Enforcement Directive does not contain any provision on the reverse burden of proof in patent litigation, or the protection of trade secrets in these situations.

The Trade Secrets Directive includes a specific provision (Art. 9) on the protection of trade secrets in litigation concerning the unlawful use or disclosure of a secret (See my post on trade secret litigation here). Ergo, said provision is not applicable in patent litigation. However, Art. 9 of the Trade Secrets Directive could provide for certain general examples of how trade secrets could be protected in patent litigation. These include restricting access to documents, restricting access to hearings, and providing non-confidential versions of judgments. There should for example be no immediate obstacle for a national legislator to include similar provisions in national laws.

Continue reading “Reverse burden of proof and trade secrets in patent litigation – Part two”

TVCatchup II – Retransmission by cable not “exempted” in the InfoSoc Directive

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Last November, I reported on the GS Media case (C-160/15), which certainly gave rise to some debate. It appears that the CJEU is quite actively handing down judgments in the area of copyright. This is perhaps not too surprising, since the member states still have quite different national legislations and the harmonization from the EU is by no means exhaustive. Additionally, and more importantly, especially national copyright laws lag behind the rapid technical development, which is why many questions of interpretation may arise in national courts.

Only a few days ago, on 1 March, the CJEU handed down its judgment (C-275/15) in the case TVCatchup II. The national law in the UK included a provision, which roughly provided that copyright is not infringed in the case of immediate retransmission by cable. The relevant question from the UK court was “whether Article 9 of Directive 2001/29, and specifically the concept of ‘access to cable of broadcasting services’, must be interpreted as covering and permitting national legislation which provides that copyright is not infringed in the case of the immediate retransmission by cable, including, where relevant, via the internet, in the area of initial broadcast, of works broadcast on television channels subject to public service obligations.”

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Punitive damages slipping into IP enforcement in Europe?

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The U.S. is known to have a regime of punitive damages in many different areas of law. This concept has however not won any significant ground in Europe, where one usually is allowed to be awarded only the actual damages suffered.

Last week, the CJEU handed down a quite remarkable judgment on damages in IP infringement cases (case C-367/15). The Polish Supreme Court had sought guidance from the CJEU on how to interpret the Enforcement Directive (2004/48/EC).

Poland had a national provision, which provided an alternative for an IP holder to seek damages corresponding to two or three times of a hypothetical license fee. The question was whether the Polish national provision could be seen to be compatible with EU law. The Advocate General (AG), in essence, answered in the negative (AG opinion). But the CJEU took a different approach. The CJEU concluded that the Enforcement Directive does not as such preclude a provision allowing for an IP holder to claim twice the amount of a hypothetical license fee. In its reasoning, the CJEU inter alia referred to international instruments (TRIPS, Berne, Rome) and also emphasized the fact that the Enforcement Directive is a minimum standard directive.

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Decompiling the rules on trade secrets, software and reverse engineering

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My last post concerned trade secret litigation (read it here), and since I am (at least momentarily) quite fascinated by the subject of trade secrets, I decided to do a follow-up post on another topical issue in this field. In trade secret law, two types of behavior are generally considered to be allowed: i. independent discovery and ii. reverse engineering. Especially the latter sparked discussion in the EU with the arrival of the new Trade Secrets Directive (2016/943) (“TSD”). Reverse engineering is allowed based on Art. 3 (1) (b) and recital 16 of the TSD. Recital 16 of the TSD stipulates that

“[…] Reverse engineering of a lawfully acquired product should be considered as a lawful means of acquiring information, except when otherwise contractually agreed. The freedom to enter into such contractual arrangements can, however, be limited by law.”

Let’s pause here for a moment and decompile this provision:

  • Main rule: If you lawfully acquire a product, you may reverse engineer it.
    • Exception: Reverse engineering is not allowed if it has been contractually agreed that such behavior is not permitted.
      • Exception to exception: However, the freedom to enter into such an agreement restricting the permissibility of reverse engineering may be restricted by law. This, in a sense, takes you back to the main rule in the first bullet point.

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Sad to CJEU Go? What Brexit Could Mean for Intellectual Property (part 2 of 2)

Guest post by William Wortley*

In this article we conclude our look at the potential implications of Brexit on the European intellectual property law framework. (Part 1 can be seen here).

Copyright

Although copyright is less harmonised than other areas of IP, it does not escape the potential ramifications of a “hard” Brexit. The Commission has signalled its intention to push forward with the Digital Single Market (DSM) Strategy, reshaping copyright to make it fit for the digital age. Certain legislation, such as the proposed Content Portability Regulation, are expected to come into force prior to the UK’s exit from the EU, although this will not stop it potentially losing effect post-Brexit if a settlement is not achieved. The regulation allows EU consumers to access digital content provided in their Member State of residence if temporarily in another Member State. If the content localisation provisions no longer applies after Brexit, content providers in the UK will be severely hampered by having to negotiate licences in the remaining Member States. The issue is of commercial importance to UK businesses, Continue reading “Sad to CJEU Go? What Brexit Could Mean for Intellectual Property (part 2 of 2)”

Sad to CJEU Go? What Brexit Could Mean for Intellectual Property (part 1 of 2)

Guest post by William Wortley*

It is over six months since the United Kingdom (UK) decided to leave the European Union (EU). The uncertainty surrounding the timing and form of the exit remains undimmed and much remains unknown about how IP rights will be affected. This week’s statement on Brexit by Theresa May make it an excellent time to revisit what the referendum result could mean for IP rights.

Patent Rights

Immediately after the Brexit vote, questions were raised about the implications for the Unified Patent Court (UPC). To the surprise of some commentators, the UK announced its intention to ratify the UPC agreement on 28 November 2016, stating that the UK would continue to work with the preparatory committee to bring the UPC into force as soon as possible. Continue reading “Sad to CJEU Go? What Brexit Could Mean for Intellectual Property (part 1 of 2)”

IP, Investment Arbitration and Policy Justifications

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Guest post by Ivan Stepanov*

International investment agreements (IIAs) are international treaties which protect investors coming from one state and their investment in another. They represent the source of what is called international investment law. IIAs have endemic protection standards with the protection against expropriation and the “fair and equitable treatment” (FET) standard being most prominent.

Even though IIAs are instruments of public international law, the dispute settlement mechanism embedded in the treaties offers the investor, a private party, to challenge the state, if it holds that through state action, it or its investment have suffered economic losses. The actions of the state are then assessed in light of the aforementioned protection standards. This mechanism is called the investor-state dispute settlement or more commonly addressed as investment arbitration. Essentially through investment arbitration an investor has the chance to sue the state in an international forum inside a specific legal environment. Continue reading “IP, Investment Arbitration and Policy Justifications”

Into the void – The lack of interaction of IP and competition law internationally

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Competition law is well recognized and enforced either regionally or nationally in a large part of the modern world. However, quite surprisingly, there is no comprehensive international agreement, which would regulate competition law in any great substantive detail. An international agreement has certainly been discussed, but even today there is no global agreement, which could be compared e.g. to the Paris or Berne Conventions or TRIPS. The role of competition law has also been discussed within the framework of the WTO dispute resolution mechanism, but it has not won any significant ground within the system. Continue reading “Into the void – The lack of interaction of IP and competition law internationally”