Peruvian patent litigation on infringement and invalidation: A sui generis case of bifurcation

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Guest post by Diego F. Ortega*

The Andean Community is the result of the seeking of the balanced and harmonious development of Bolivia, Colombia, Ecuador and Peru, which in May 26, 1969 signed the Cartagena Agreement, laying the groundwork for the creation of a subregional community initially known as Andean Pact and later renamed as Andean Community. In order to achieve the said objective, the Andean Community promotes a continuous process of integration and economic and social cooperation. In particular, this process of integration involves the need of having common rules as to matters that foster the unification of the market, such as industrial property rights.

The industrial property system within the Andean Community was established by the “Decision 486”, which aims to guarantee a rigorous scrutiny as to the fulfillment of the requirements needed for the granting of a patent. Thus, Andean Community does not provide only for the mandatory performance of a substantive examination carried out by the national patent authorities of its Member Countries, but also for mechanisms which allow third parties to prove that an invention does not meet the legal requirements, seeking the denial of the patent (through a pre-grant opposition request) or, if the patent is granted, its revocation (through an invalidation request). Continue reading “Peruvian patent litigation on infringement and invalidation: A sui generis case of bifurcation”

Why did Japanese electronics companies surpass rivals in technologies and number of patents, but lose in business?

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Car navigation systems, DVD players, liquid crystal displays, solar panels, DRAM memory and lithium ion batteries are products that have been invented and developed mainly by Japanese companies. The companies created new markets and got high market shares with many patents to exclude rival companies. Then the world’s markets expanded several times larger in scale. They kept investing high amounts in R&D for higher functionalities. Their world’s market shares recorded once more than 80% in all above-mentioned products except for DRAM memory (more than 40%). However, even though the market expanded, their shares have been drastically decreasing although they had developed cutting edge technologies with many patents related thereto. There is one report (Masahiro Samejima et al., Encouragement of IP Strategy, February, 2016), which analyzed the reason of their defeat in business and introduced a new interesting point of view. I would like to briefly discuss it here.

Continue reading “Why did Japanese electronics companies surpass rivals in technologies and number of patents, but lose in business?”

AG Wahl provides guidance to define “excessive prices” under EU competition law

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Some months ago, in a public speech, the EU Competition Commissioner Margrethe Vestager set the antitrust radar against exploitative conducts and, particularly, against “excessive pricing” in the pharmaceutical, energy and hi-tech markets. Her words had a lot of echo in the antitrust community, since the Commission is traditionally reluctant to step against high prices, for many different reasons (essentially, it lacks of resources and expertise to define “fair” prices, if this concept really exists).

In the past days, Advocate General Wahl came back to that topic and, in response to a request for a preliminary ruling, delivered to the CJEU an opinion on the issue of “excessive pricing”. AG Wahl’s reasoning mainly relates to the market concerned by the request for a preliminary ruling, namely the licensing business of collecting societies. However, it shreds some light on one of the most economic issues of competition law, and, if the opinion is confirmed by the Court, it will provide guidance for future investigations. Continue reading “AG Wahl provides guidance to define “excessive prices” under EU competition law”

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

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Background – lack of protection

For a long time in many European countries, pharmaceutical compounds were not eligible for patent protection. Prior to the adoption of TRIPS, there were actually 22 countries in which the protection of pharmaceutical compounds was unavailable. Innovative pharmaceutical developers were only able to indirectly try to protect their pharmaceutical product by protecting the process for manufacturing the product. At the time, some states made efforts to compensate for the lack of product protection in different ways. In Finland, you could apply for a so called “analogous process patent”, by which you were able to get a patent for if you had developed a new product, but the scope of protection was, odd as it may seem, nevertheless restricted to the manufacturing process.

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

Revised Patent Examination Guidelines in China welcome more patents on business models

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Last October, the State Intellectual Property Office of China (SIPO) released draft revisions to its Guidelines for Patent Examination for public consultation (see my earlier post). This month, SIPO published the final text of the revised Guidelines, which will enter into force on 1 April 2017. In comparison to the draft, the final version remains substantially unchanged. This may be a sign of support from the stakeholders. In fact, the proposed revisions received a quite good press immediately after their release, even when it comes to the part of revisions regarding patents on business models, which have been and probably are still one of the most controversial aspects of the IP system in many other countries such as the U.S.

As the SIPO explicitly stated, the planned revisions are aimed to strengthen the IP protection for innovation in emerging fields such as Internet, e-commerce, big data and to improve the IP protection system for business models. This emphasis reflects the state of innovation in China, where indigenous businesses have been so far quite successful in developing innovative services and products in these emerging fields. While it can be debated whether an expansion of patent protection into the arena of business models would indeed do more good than harm to the innovation, the objective of the Chinese policymakers is clear: to promote business model innovation through more IP protection.

While it remains to be seen in long term whether the above policy objective can be achieved, it is for individual inventors and businesses more interesting what immediate changes in practice will come out of the planned revisions. So, let’s first take a look at the revision itself. Continue reading “Revised Patent Examination Guidelines in China welcome more patents on business models”

IP issues in the telecom industry – An interview with Matteo Sabattini

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The telecommunication industry has experienced a rapid and constant growth over the years. Now the 5G technology and the “Internet of Things” are behind the corner, but a number of legal and regulatory issues are being discussed.  We talk about this and much more with Matteo Sabattini, expert in IP-related matters (for his complete bio, scroll down).

Good morning Dr. Sabattini. What’s the weather like today in Washington DC?

Earlier today, it was snowing. Light flurries. Quite unexpected considering that yesterday we had temperatures close to 20 degrees Celsius and spring weather conditions!

Today you are a patent and technology policy expert. What led you into this field? As a student, did you expect to work in this field?

In college, I was passionate about technology and engineering. I had initially envisioned myself as a researcher, an academic or an R&D engineer. And, in fact, that is what I did after I graduated and what pushed me to get a Ph.D. in Electrical Engineering. I got into IP with an internship at a consulting firm in Boston. While I was growing frustrated with the pace and the often-challenging industrial applicability of academic research, I enjoyed the diversity that working on patents gave me. I was learning quickly and eagerly about a new field, where I could still use my technical skills in a much more applied fashion. Through the years, as I was learning more about IP, I gradually moved from pure technical support to business and commercial aspects of the business. Continue reading “IP issues in the telecom industry – An interview with Matteo Sabattini”

Restriction of competition by object after Cartes Bancaires: further developments

How to assess whether an agreement between competitors has an anticompetitive object? In general, an agreement is known to be anticompetitive by object (or “per se”) when competitors agree on prices and quantities. However, when an agreement contains pro and anti-competitive features, a balance should be struck and the analysis is more complicated.

This assessment has an enormous impact on the burden of proof lying on competition authorities in antitrust investigations. Indeed, when competition authorities conclude that an agreement is restrictive by object, they do not have to prove the existence of an anticompetitive effect.

For decades, the antitrust community tried to  to make a clear distinction between those agreements, which are restrictive by object and the ones whose effects have to be analysed in more depth. Finally, in the last years courts around Europe have handed down a number of judgments on this issue, trying to limit the frequent recourse by competition authorities to the “object shortcut”.

Continue reading “Restriction of competition by object after Cartes Bancaires: further developments”

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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The scope of patent with an extended term became clearer with three concrete standards provided by the IP High Court in Japan

A patent term may be extended if there is a period during which a patented invention is unable to be worked until a marketing authorization has been granted (For further information, see here). However, there was, until recently, no case law in Japan on the interpretation of the scope of patent with an extended term, and high uncertainty as to patent infringement by generic drugs was a big issue in the pharmaceutical industry. On 20th January, 2017, the IP High Court’s judgment (grand panel) was handed down, answering this issue by establishing three concrete standards. This judgment attracts great attention of generic companies and will boost their marketing of generic drugs because these standards contributed to clear away the uncertainty of patent infringement.

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On sausages and Facebook/WhatsApp – Germany reforms its antitrust act (part 2 of 2)

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Guest post by Rupprecht Podszun, professor of Civil Law, German and European Competition Law at the University of Düsseldorf *

The German legislator currently amends the competition code so as to update it for the digital economy. This is a pioneering step. After having examined part of the proposed amendments yesterday (see here), this post will describe the new rules for the digital economy.

New rules for the digital economy

The implementation of the directive and the closing of the sausage gap coincided with a heated debate in German media on the power of internet companies, these Voldemorts from the Silicon Valley. Vice-Chancellor Sigmar Gabriel and the head of the influential German media house Axel Springer, Mathias Döpfner, led the campaign against Google & Co. And so, Gabriel’s ministry came up with new rules for the digital economy. Continue reading “On sausages and Facebook/WhatsApp – Germany reforms its antitrust act (part 2 of 2)”