Fresh EUIPO Report on trade secrets and patents – Finnish companies top the list in use of trade secrets

Last month, the EUIPO published an interesting report titled “Protecting innovation thru trade secrets and patents: determinants for European Union firms” (“the Report”). Seven findings have been included in Executive Summary, and in this post I will dig into the three findings I find most interesting (No. 2, 4 and 5 in the Report).

“The use of trade secrets for protecting innovations is higher than the use of patents by most types of companies, in most economic sectors and in all Member States”

Upon first reading, I didn’t find this very surprising. Namely, virtually all companies have some kind of trade secrets like e.g., sales or related data, but only some companies are innovative enough to be granted patents even if they would apply. But what surprised me somewhat was that Finland (where I reside and practice law) was the country where trade secrets would be used the most compared to all other countries in Europe (page 28 of the Report). I found this surprising, since while every serious IP lawyer must know trade secret law, the topic is not widely debated in Finland. In Finland, as in many other countries in the world, trade secrets is still the “Cinderella” of IP.

Based on the Report, large companies typically utilize both trade secrets and patents on a larger scale compared to SMEs. Nevertheless, Finnish SMEs are the heaviest users of trade secret protection in Europe, based on the report (page 30 of the Report). Namely, a staggering 76,8 % of Finnish SMEs use trade secrets to protect trade innovations according to the Report. Innovative SMEs in Finland use trade secrets 2,5 more than patents. This may of course be rooted in several different factual and legal aspects. By way of example, patents are of course more expensive and the threshold may not always be met (e.g., novelty and inventive step). Also, patents have a fixed term (20 years), while trade secrets do not. Continue reading “Fresh EUIPO Report on trade secrets and patents – Finnish companies top the list in use of trade secrets”

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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Recent development in Japanese patent case law; the doctrine of equivalents and the Supreme Court judgment in the Maxacalcitol case

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In my previous post, I wrote about an IP High Court judgment (the Maxacalcitol case) regarding doctrine of equivalents in patent infringements in Japan. The defendants appealed against the IP High Court judgment and the Supreme Court handed down the final judgment on 24th March, 2017.  Continue reading “Recent development in Japanese patent case law; the doctrine of equivalents and the Supreme Court judgment in the Maxacalcitol case”

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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Recent developments on the admissibility of patent term extension in Japan

Drugs are not allowed to be marketed without a marketing authorization. Taking into account the investment on R&D for a new drug and the necessity to recoup such investment, the patent term may be extended by a period not exceeding 5 years if there is a period during which the patented invention cannot be worked. Later in this post, I will discuss the judgment of the Japanese Supreme Court in 2015, which caused the guidelines on patent term extension to be significantly amended.

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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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The death of book scanning services in Japan

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The IP High Court in Japan has considered book scanning services to amount to copyright infringement. The judgment became final in March this year because the Supreme Court dismissed the appeal by the service provider. On 30th November, the police in Kyoto arrested a book scanning service provider, who scanned popular Japanese manga comics in response to its clients’ request. This is the first criminal case and could largely affect similar businesses in Japan. In this posting, I would like to briefly explain the reasoning of the IP High Court.

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Shhh….Keeping the Secret Secret and Trade Secret Litigation

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“Whatever you do, don’t tell anyone”

(Queens of the Stone Age – The Lost Art of Keeping a Secret)

I doubt Josh Homme was thinking about trade secrets when he wrote the above lyrics, but there’s some valuable “legal advice” hidden in those lines. Namely, as often pointed out, once a trade secret is out, it may be lost forever.

Indeed, the secret maybe lost but not necessarily given away for free. Trade secret legislation is designed particularly for these unfortunate situations. Once the secret is out, you may not be able to get it back in the bottle again. But you may be able to stop further spreading of the secret and at least get some damages from the perpetrator. This will usually mean you will have to go to court for enforcement. And this is where it may get a bit tricky: Alas, in order for the enforcement to be successful you will probably have to disclose your secret. That doesn’t sound very tempting if your trade secret is valuable, does it? Continue reading “Shhh….Keeping the Secret Secret and Trade Secret Litigation”

The strategies for patent litigation under the double track system in Japan

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In my previous posting (here), I described advantages and problems in the two systems, i.e., the double track system and the bifurcation system in patent litigation. In this posting, I, as a Japanese patent litigator, would like to introduce several practical strategies for patent litigations under the double track system in Japan in the form of Q&A.

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