Latest status and trend of patent litigations in China

A Chinese judicial statistics service platform, IPHOUSE has recently published a statistical analysis report on the status and trend of patent litigations in China from 2013 to 2017. Some interesting information is gathered below for an overview. Please note that the term “patent” in the report, if not further specified, is used to encompass several patent-related rights, namely invention patent, utility model patent and design patent. Continue reading “Latest status and trend of patent litigations in China”

The Statement of Patent Working in India – time for a change

Guest post by Preston Richard*

It is that time of the year again in India when the patentee must file an annual statement of working of their every granted patent. The statement has to be filed by the 31st of March each year.

Unique to India, this annual ritual mandated under Art. 146 (2) of the Indian Patent Act requires the patentee (and licensees) to furnish a statement to the extent to which the patented invention has been worked on a commercial scale in India.

Historical background

This requirement stems from the Ayyangar Report (PDF), a policy document drafted in 1959 that forms the basis of the Indian Patent Regime.

While some countries chose to have no working requirement of patents, the Ayyangar Report reasoned that the quid pro quo the society receives in return for the grant of the monopoly could only be ensured if the patent is used for the purpose for which it is granted.  Therefore, the report concluded that for a then under-developed country like India, certain safeguards against patents of foreigners was necessary. This resulted in the principles relating to the working of the patent and the consequences in case of failure being codified in the Indian Patent Act.

Continue reading “The Statement of Patent Working in India – time for a change”

Latest update on the crispr cas9: the patent battle continues in Europe

Guest post by Lucia Tamayo Del Portillo*

After causing major buzz in 2017 due to the decision of the patent interference procedure before the United States Patent and Trademark Office (USPTO) which is currently under review in Federal Court, the Crispr Cas9 patent battle enters into 2018 with another shocking decision, this time rendered by the opposition division of the European Patent Office (EPO).

As readers may recall, Crispr Cas9 is a gene editing tool that allows scientists to manipulate DNA of living organisms in a cost-effective manner with accurate precision and the possibility to add, amend or delete parts of DNA sequences. The technology has multiple applications in different industries, with, of course, human health being the most promising and profitable one. Continue reading “Latest update on the crispr cas9: the patent battle continues in Europe”

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.

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

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.

Continue reading “Japan considers introducing a new ADR system with a compulsory license for SEPs”

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”

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”

The U.S. Supreme Court judgment on forum shopping; TC Heartland LLC v. Kraft Food Brands LLC

Historically, defendants in patent infringement litigation lawsuits in the U.S. have often been sued in so-called “plaintiff-friendly” courts such as the Eastern District of Texas even when there is little or no connection between the legal issue and the jurisdiction in which they are to be litigated. This issue is known as forum shopping. Regarding this issue, the U.S. Supreme Court handed down a very important judgment on 22nd May, 2017. The judgment could make it more difficult for a patent holder to file a lawsuit in plaintiff-friendly courts. Continue reading “The U.S. Supreme Court judgment on forum shopping; TC Heartland LLC v. Kraft Food Brands LLC”

Protective letters in the UPC

Protective letter

At least if the current plan holds, the Unified Patent Court will quite soon be up and running. Businesses express concerns on possible misuse of the UPC’s powerful measures for patent enforcement such as pan-European injunctions and Saisie, i.e., an order to compulsorily preserve evidence on alleged infringers’ premises. Along with these measures, however, the UPC will also provide tools aimed exactly at preventing the misuse of such orders. A so called “protective letter” will be one of the tools to that end. This tool may be unfamiliar to many readers from outside Germany, since it is mainly a German peculiarity and although available in several other European jurisdictions, such as Switzerland, the Netherlands and Belgium, it has limited practical importance there. Now, being introduced by the UPC agreement, the protective letter is expected to gain its influence throughout Europe. This post briefly introduces what a protective letter is, and discusses some special features of a UPC protective letter and some considerations for preparing protective letters. Continue reading “Protective letters in the UPC”