AG Saugmandsgaard Øe provides guidance on the application of EU competition law in the pharmaceutical sector

On 21 September Advocate General Saugmandsgaard Øe provided his Opinion to the CJEU on some key issues regarding competition law in the pharmaceutical sector. The request for a preliminary ruling was referred by the Italian Supreme Administrative Court (“Consiglio di Stato”) in relation to a cartel case where the Italian Competition Authority (“ICA”) fined Roche and Novartis for a total amount of 180 million euros.

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Excessive use of online information collected on third parties’ websites amounts to unfair competition – rules the Shanghai IP Court in the Hantao v. Baidu case in China

Never has information on the internet been as interconnected as it is today. Thanks to the so-called web scraping technology, in which computer programs are used to extract information from different websites, online platforms are able to incorporate related information from different sources into a single webpage so that users can find and utilize desired information in a convenient way. However, the legality to use information collected by others deserves cautious examination, and unfair competition law is one of the aspects to be considered.

In September, the Shanghai Intellectual Property Court issued a second-instance judgment in Hantao v. Baidu case, laying out useful guidelines for assessing whether unauthorized use of information collected by others constitutes an act of unfair competition. Continue reading “Excessive use of online information collected on third parties’ websites amounts to unfair competition – rules the Shanghai IP Court in the Hantao v. Baidu case in China”

International IP Exhaustion and the Judgment of the Supreme Court of the United States in Impression v. Lexmark

Setting the Stage – IP Exhaustion

IP rights are neither perpetual nor limitless. In fact, IP rights are inter alia limited in scope, duration and by express exceptions. A sometimes forgotten limitation of IP rights is exhaustion, or the “first sale doctrine”, which is the name it bears in the U.S.

In essence, the IP right related to a certain article is considered to be exhausted once it has been sold with the consent of the IP holder. From a geographical perspective, two alternative principles (leading to very different outcomes) can be distinguished. The first one is national exhaustion, which entails that only a sale of an article within the relevant national territory would exhaust the IP right. According to a second principle, such territorial distinction is not recognized, i.e., a sale anywhere in the world can exhaust the IP right (international exhaustion).

In the U.S., the United States Court of Appeals for the Federal Circuit (Federal Circuit) as well as the Supreme Court of the United States (SCOTUS) have considered the question of exhaustion from many different perspectives in their earlier judgments. In this article, I will discuss the judgment of the SCOTUS in a quite recent case regarding exhaustion, Impression v. Lexmark. The judgment was handed down on 30 May 2017.

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“Colour” your rights or not?

Guest post by Florica Rus*

Over the years, many companies have sought trade mark protection for colours or colour combinations. This strategy turned out to be not a plain sailing.

Since Libertel – C-104/01 and Heidelberger Bauchemie – C-49/02 judgments, colours are recognised as a factor that may lead consumers to a purchasing decision. However, colours are considered to have a limited capacity to communicate an indication of origin to the consumers and being distinctive is not their strength.

On 22 July 2017, the General Court held that three identical rectangular coloured stripes do not make the mark distinctive enough to fulfil the commercial origin function (T-612/15). The figurative mark applied for – EUTM 012880481 (three stripes colour) for goods in classes 18, 25 and 26, was found to be neither distinctive nor to have acquired distinctiveness through use. The Court illustrated that consumers in the fashion sector are not used to identify the origin of the product based on a colour and three coloured stripes will not be apprehended as an indicator of origin. Continue reading ““Colour” your rights or not?”

BREAKING: the CJEU sets new criteria to assess excessive pricing under competition law

Yesterday the Court of Justice of the European Union ruled on one of the hottest antitrust issues of 2017: excessive pricing.

It was Commissioner Vestager in late 2016 who set the antitrust radar of the European Commission on these conducts, which were considered a bit like unicorns until last year: traces of them were visible only on old handbooks. Following the Commissioner’s speech, the European Commission launched an investigation against Aspen Pharma for alleged excessive pricing in May 2017 (everywhere but in Italy, where Aspen had already been fined by the Italian Competition Authority, see here).

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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”

“Annual Competition Act” with lowered merger notification thresholds and other pro-competitive measures approved in Italy

On 2 August 2017, the Italian Parliament enacted the so called “Annual Competition Act”, an Act which is supposed to be approved every year by the Legislator in order to adopt measures that should boost competition on the market. Why is that? Under the Italian Competition Act, the Italian Competition Authority submits an yearly official report to the Presidency of the Council to identify all the pre-existing or emergent legislative measures that create restrictions on competition and to suggest possible solutions. After examining the report, the Government delivers a draft law to the Parliament which will discuss, amend and approve it.

The new law significantly lowers the existing merger notification turnover thresholds. As a consequence, the new thresholds which trigger a mandatory filing to the Italian Competition Authority are:

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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 law 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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No exhaustion doctrine for “method-of-use” patents – Iwncomm v. Sony decision in China

Earlier this year, the Beijing IP Court issued a landmark decision in the Iwncomm v. Sony case, which clarified a number of interesting issues relating to standard essential patents (SEP). The court ruled that Sony had infringed an SEP held by the Chinese company Iwncomm and granted, besides damages for past infringement, the first injunction based on an SEP in China. In the same decision, the court addressed another important question concerning the applicability of the exhaustion doctrine. Under the doctrine, once an authorized sale of a patented product or a product obtained by using a patented manufacturing method occurs, the patent holder’s exclusive rights to control the use and sale of that product are said to be “exhausted,” and the purchaser is free to use or resell that product without further restraint from the relevant product patent or method-of-manufacture patent. It was nevertheless unclear from the existing case law, whether the exhaustion doctrine shall also be applied to a method patent that protects a method of using an existing product(s) (method-of-use patent), until the Sony decision now answered this question clearly in negative. This decision may thus provide an important guidance for future cases. However, when compared with more balanced approaches in other jurisdictions, which I will briefly discuss in this post, this guidance does not appear unquestionable. Continue reading “No exhaustion doctrine for “method-of-use” patents – Iwncomm v. Sony decision in China”