Many patent holders attempt to reap a benefit from their patents by identifying potential infringers and offering them a license. Negotiations often begin with the potential infringer receiving from the patent holder a letter that informs the recipient of the sender's patent rights and may even threaten legal action.
In the USA, the receipt of such a letter can cause much trouble, but recipients who do not handle the situation with care can multiply their troubles. Numerous issues must be carefully considered. For example, should the recipient respond to the letter? Should the recipient obtain a written patent opinion? Should the recipient preemptively file suit against the sender? Unfortunately, there are no ‘right’ answers that fit every circumstance, but the recipient can make the best of a potentially bad situation by being informed and responding wisely.
The receipt of a letter alleging patent infringement should not be taken lightly, whether the sender is an industry competitor or a so-called patent troll. Every business with a US presence should be prepared to address, in a timely and knowledgeable manner, the practical and legal issues raised by such letters. The failure to do so can be a costly lapse and may severely jeopardize the recipient's defense of the infringement allegations.
The undisputed existence of a multi-billion dollar market for the purchase of counterfeit trade marked products evidences a state of affairs in which counterfeiting though an ‘outlaw’ behaviour enjoys public support. Law reform aimed at positioning trade marks as something for everyone—not just for the rich and famous—while counter to the current trend of trade mark legal theory, would be a valuable step towards abatement of trade mark counterfeiting.
An ideal theory of trade marks for a society based on equal justice under law would give each trade mark an equal scope of legal protection, so that every trader, large and small, would see it in their interest to support the concept of trade mark enforcement. The alternative approach—more protection for those trade marks backed by the most massive financial resources—will lead to a polarized society of "trade mark haves" v "trade mark have-nots", with the "haves" being in the distinct minority and waging constant war against the "have-nots." The legislature and sometimes even the courts might be swayed to the side of the "haves," but they will nevertheless end up on the de facto losing side due to consequent widespread disrespect for law.
If any citizen could appreciate that the cost of registering and successfully enforcing a trade mark was within his or her means, and was not just something for billionaires and multinational corporations, respect for trade marks would be fostered. Reducing consumer willingness to accept knowingly counterfeit products may not win the war on counterfeiting entirely, but it may help force the counterfeiters into fighting a rear-guard action against public opinion.
The case addresses whether the UK Court has a role to play in deciding whether patents declared to be essential to an international standard actually are essential.
The UK Court regards declarations of essentiality (or inessentiality) as commercially useful and therefore a legitimate use of Court resources and powers. The Court will take a pragmatic and not overly linguistic approach to comparing patent claims and standards. As many observers have suspected would be the case, it appears a lot easier to self-declare a patent as essential than it is to have that view endorsed by the Court.
With the growing importance of internationally agreed standards in the electronics and telecom fields, the issue of whether or not patents said to cover the standardized technology actually do is of increasing commercial significance. The UK Court's willingness to grapple with the question of essentiality in a robust and pragmatic way could be of great utility to those seeking to licence or be licensed for standardized technologies. The recent Nokia v Interdigital case addresses whether the UK Court has a role to play in deciding whether patents declared to be essential to an international standard actually are essential. The decision indicates that the UK Court regards declarations of essentiality (or inessentiality) as commercially useful, and therefore a legitimate use of Court resources and powers. The Court took a pragmatic and not overly linguistic approach to comparing patent claims and standards. It appears that, as many observers have suspected, it is a lot easier to self-declare a patent as essential than it is to have that view endorsed by the Court. The UK Court's willingness to grapple with the question of essentiality in a robust and practical way could be of great utility to those seeking to licence or be licensed for standardized technologies.
In the USA, the doctrine of patent exhaustion cuts off a patent owner's rights to enjoin, control, or extract royalties from a patented product after an authorized, unconditional sale of that product. While the basic policy of preventing a patent owner from repeatedly extracting compensation for the same product seems straightforward, the law developed by the courts over the past two centuries in response to efforts by patent owners to preserve and control their rights is more complex.
Court decisions illustrate efforts to circumvent the exhaustion doctrine and control the downstream use of a patented article by imposing use conditions in a patent licence and by creating arrangements that licence patented products at various levels in the supply chain. Recent decisions of the Federal Circuit have led to a perception that many such conditions and arrangements are enforceable.
The review covers when the exhaustion doctrine applies, when use conditions and other licensing arrangements are enforceable, the interplay of exhaustion and implied licences, and the impact of patent, contract, and antitrust law on exhaustion. The case law provides patent owners guidance in structuring licence agreements in a way that does not unintentionally exhaust their patent rights, particularly in industries having a multi-level product supply chain. The upcoming decision of the Supreme Court will provide further guidance.
Regulations issued under the Australian Patents Act 1990 (Cth) abolished, for all patent applications advertised as accepted on or after 22 July 2007, the requirement for applicants and patentees to file at the Australian Patent Office the results of documentary searches relating to the invention.
The requirement to file search results for applications advertised as accepted before 22 July 2007still remains. As the allowed time limit to take this step has now expired, applicants who seek to remedy a failure to disclose search results on time will need to apply for extensions of time, and to demonstrate that the failure was due to a genuine error or omission by the applicant or their attorney.
This article summarizes the changing duty of disclosure regime that has applied to patent applications pending before the Australian Patent Office between 1 April 2002 and 22 July 2007.
In a landmark decision, the Intellectual Property High Court of Japan enforced a Japanese pharmaceutical patentee's crystal form patent to stop a Japanese generic drug maker, even though the basic substance patent on its blockbuster antibiotic compound had expired some 5 years earlier.
Pharmaceutical companies are extremely dependent on rigorous patent protection against relentless generic competition resulting from recently increasing patent expirations. The article provides a snapshot of similar crystal form patent litigation developments in the commercially important pharmaceutical patent jurisdictions such as Japan, the USA, and Europe.
Pharmaceutical patentees can now utilize crystal form or second generation patents as part of their Japanese patent strategy to enlarge the scope or length of patent protection over the product.
Taiwan will establish a specialized Intellectual Property Court and implement the Intellectual Property Case Adjudication Act (the ‘Adjudication Act’), a new set of procedural rules for IP-related cases on 1 July 2008. This article briefly introduces the major changes that will be brought by the establishment of the IP Court and the Adjudication Act. Those changes aim to cure existing defects in current IP litigation procedure.
This article first addresses the problems in current practice and then introduces the key changes brought by the new laws: the establishment and jurisdiction of the IP Court, the availability of the invalidity defence, the new staff of technical examiners, the improvement of preservation of evidence, the introduction of protective orders, and the stricter standard for preliminary injunction.
The establishment of the IP Court, together with the implementation of the Adjudication Act, indicates that a new era of IP-related dispute resolution is at hand.
A dispute over the shape of air freshener packaging has provided 12 judgments in 6 EU member states that discuss the still relatively new Community Design Regulation. The decisions provide some guidance until the many interpretational issues in the Regulation can be definitively clarified by the European Court of Justice.
For now, the decisions establish that: The tests for novelty and ‘individual character’ are separate tests; The test for infringement is the flipside of the test for validity; The ‘informed user’ is an experienced user of the product and not a design expert; and The test for establishing ‘overall impression’ remains confused.
The decisions demonstrate that Registered Community Designs can be a powerful weapon in the fight against knock-off products, although not consistently across the EU.
This article concerns IP law in the USA and the Registered and Unregistered Community Design and Community trade mark law in the European Union.
The fashion industry profits from creative content, yet receives no legal protection under IP law in the USA. The argument against protection for fashion works stems from the belief that more design copying will lead to more incentive for new fashion designs, increasing commercial competitiveness. A reflection on challenges in US copyright, patent, and trademark law will explain why the Registered and Unregistered Community Design laws in European Union is the ideal solution for fashion design protection. Proposals to amend the Copyright Act to include the Design Piracy Prohibition Act are insufficient because they still do not provide the option of dual rights for designs. The EU extends its protection to designs that have a different overall appearance and to the trade origin of the product or service under Community trade mark law.
Adopting EU's scheme will provide economic privileges such as jobs and increasing commercial competitiveness within the USA. It will also increase creative expression among many other benefits.
This article deals with most important legal questions regarding graffiti. It seeks to identify issues that may arise in copyright and trade mark law. The analysis is based on selected international, Polish, UK, US and European Union regulations.
The social phenomenon known as graffiti is not legally indifferent. However, there are few articles dealing with those issues relevant in IP law. The author presents a short overview of the contemporary graffiti movement. He then presents important IP legal problems that may arise as regards to graffiti activity and briefly analyzes those issues relevant to domestic and international legal regimes.
Consistent with the TRIPs Agreement, the patent system has a ‘one size’ approach to duration of protection, in that all inventions are entitled to the same maximum period of grant: 20 years. This paper seeks to answer the question whether this ‘one size’ approach fits all inventions.
The article determines if the present system of patent protection is within the bounds of what might be considered optimal, when account is taken of the economic theory on duration, the real world practices of patentees regarding renewal of their patents, and the legal features of the current system. It finds that the system on duration of patent protection currently in operation matches closely to what would be considered optimal.
These considerations are relevant to practitioners advising their clients on duration of protection and renewal rates, and to policy makers concerned with optimizing the patent system.
This article looks at the important decisions of 2007 on the Community trade mark made by the Luxembourg courts.
The cases discussed concern the application of Council Regulation (EC) No. 40/94 of 20 December 1993 on the Community trade mark (the ‘CTMR’), Commission Regulation (EC) No. 2868/95 of 13 December 1995 implementing the CTMR (the ‘CTMIR’), and the Council Directive 89/104/EEC of 21 December 1988 (‘Directive 89/104’).
The purpose of this article is to give a quick overview of the most significant trade mark cases decided in 2007 by the Luxembourg courts. The article has a practical bias and is aimed at readers who wish to find quickly the key decisions of 2007.
The ongoing dispute between Nokia and Qualcomm exemplifies the complex issues that arise when the licensor–licensee relationship breaks down. It illustrates that any means by which a licensee can secure rights to use licensed IP after termination of a licence agreement can be of great commercial importance, not to mention significant economic value. If a licensee can continue to use licensed IP notwithstanding that its agreement has been terminated, a licensor's ability to control and derive maximum economic benefit from its IP may be fundamentally compromised.
The means available to licensees to secure such rights vary depending on the kind of IP right licensed, but there are several common themes, which draw on a diverse range of legal rules and concepts, including specific IP concepts and laws (including the rules relating to assignment and licensing, the exhaustion of rights, revocation and invalidation, and defences to infringement claims), contract law and competition law. This article discusses practical implications to be considered when drafting IP licence agreements.
From a licensee's perspective, the termination of its licence agreement is not necessarily the end of the road. Licensees should be aware of these post-termination rights when expecting to face difficult renegotiations with a licensor. From both parties' perspectives, but particularly that of licensor, this article should demonstrate the importance of drafting to avoid any uncertainty that may arise on the termination of a licence agreement.
The task of harmonization in the IP framework is currently at risk.
This conclusion is shown by the way EU Member States have recently enacted Directive 2001/29 on the harmonization of certain aspects of copyright and related rights on the information society. Particularly, no Member State seems to have considered the interpretation of the three-step test of the Berne Convention given in 2000 by the WTO panel, notwithstanding its importance.
Moreover, three recent opinions of the French Cour de Cassation, the French Conseil Constitutionnel, and the German Federal Court of Justice appear not to have endorsed the WTO's interpretation of the three-step test. This scenario confirms the impression that the international framework is devoid of any degree of harmonization.
Although the aims of certainty and predictability in the international trading system are among its main tasks, the World Trade Organization has not yet tackled the plight of harmonization, preferring a political approach to smooth conflicts and disputes. Yet, the World Trade Organization has recently taken important steps that seem to herald a new attitude. In United States—Sections 301-310 of the Trade Act of 1974, the World Trade Organization dismissed the traditional deference towards national legislations. In addition, at international and national levels, the Allegheny Ludlum and Softwood Lumber cases aligned their interpretations to that of the World Trade Organization.
This article focuses on the relationship between trade mark rights and other forms of statutory protection.
FIFA is the proprietor of a number of trade mark registrations in South Africa. The strength of these registrations is discussed and the view taken that a number are open to attack, in terms of both distinctiveness and user requirements. It is then shown that, if statutory protection is given for the same words and phrases, the weaknesses of the trade mark registrations will be avoided.
The article serves as an illustration of the manner in which international sporting bodies attempt to extend their IP protection beyond the bounds of existing legislation.
There is a complex relationship and interplay between TRIPs and CBD, two multilateral agreements adopted to attain inherently distinctive objectives.
The CBD/TRIPs issue has been discussed in the WTO since 1996 in the Committee on Trade and Environment, and has been on the agenda of the TRIPs Council since 1999. At the WTO Doha Ministerial Meeting in 2001, a Trade Minister made reference to the issue in paragraphs 12 and 19, instructing the Council for TRIPs to look into the relations between TRIPs and CBD. The discussion in the TRIPs Council has gone into considerable detail with a number of ideas and various proposals have been mooted to deal with the same.
This paper attempts to discuss and analyse the areas of possible conflict and reasons for such conflicts. It also seeks to gain an insight into the thought-process of the various stakeholders, then discusses alternative courses of action, and attempts to chart the way forward.