Patent auctions: business and investment strategy in IP commercialization

Legal context. This article concerns patent sale and licensing,asset deals connected with M&A and intangible asset transactions. Key points. Patent owners might find patent auctions a fastway to sell or license their patents. There is a high probabilitythat bidders will purchase or license low- or no- value patentsbecause patent auctions set a very tight time frame for bidders’due diligence. The nature of the patent right creates a bigimbalance in terms of knowledge between owner of the patentand the purchaser or licensee; the latter party can only minimizethe risk of purchasing or licensing a "zero" or low value patentby receiving sufficient time to investigate the patents. IPauctions may however be a better and safer means of purchasingor licensing domain names or trade marks, due to their legalnature. Practical significance. Many companies might believe that patentauction is a swift and effective way to find a purchaser ora licensee for their IP rights. Even so, it is imperative thatthe bidders themselves conduct a proper due diligence of thepatents offered, corresponding to their needs and to their assessmentof their true financial and business value.     

技术在先使用与专利权冲突的探讨

在我国专利法中,仅对外观设计专利,在第23条规定了授予专利权的外观设计不得与他人在先取得的合法权利相冲突,而对发明和实用新型专利没有做出明确规定。这是否意味着对于发明专利和实用新型专利不存在在先权原则制约?如果对此两类专利不存在在先权制约,如何理解适用专利法第63条第2款规定的,在专利申请日前已经制造相同产品、使用相同方法或者已经做好制造、使用的必要准备,并且仅在原有的范围内继续制造、使用的不视为侵犯专利权?不视为侵权的行为属于对专利权的合理使用还是专利权的取得不得损害他人在先权利?不解决上述问题,就无法分清实践中专利技术的在先使用和专利侵权的界限,由此可能导致截然不同的法律后果。以程序法的视角和保护知识产权国际公约协定确立的基本原则为背景,从明确保护专利技术的在先使用权、专利技术在先使用权抗辩专利权的法律适用、专利技术在先使用权的效力地位及保护途径三个方面来探讨解决上述问题。     

专利技术的在先使用问题研究

在我国专利法中 ,仅对外观设计专利 ,第二十三条规定明确了授予专利权的外观设计不得与他人在先取得的合法权利相冲突 ,而对发明和实用新型专利没有做出明确规定。这是否意味着对于发明专利和实用新型专利不存在在先权原则制约 ?如果对此两类专利不存在在先权制约 ,如何理解适用专利法第六十三条第二款规定的 ,在专利申请日前已经制造相同产品、使用相同方法或者已经做好制造、使用的必要准备 ,并且仅在原有的范围内继续制造、使用的不视为侵犯专利权 ?不视为侵权的行为属于对专利权的合理使用还是专利权的取得不得损害他人在先权利 ?不解决上述问题 ,就无法分清实践中专利技术的在先使用和专利侵权的界限 ,由此可能导致截然不同的法律后果。本文作者以程序法的视角和保护知识产权国际公约协定确立的基本原则为背景 ,从明确保护专利技术的在先使用权、专利技术在先使用权抗辩专利权的法律适用、专利技术在先使用权的效力地位及保护途径三个方面来探讨解决上述问题。     

To Patent or Not: Faculty Decisions and Institutional Success at Technology Transfer

We draw on qualitative data derived from field work on two university campuses to develop an explanation for widely disparate rates of new invention disclosure. We argue that faculty decisions to disclose are shaped by their perceptions of the benefits of patent protection. These incentives to disclose are magnified or minimized by the perceived costs of interacting with technology transfer offices and licensing professionals. Finally, faculty considerations of the costs and benefits of disclosure are colored by institutional environments that are supportive or oppositional to the simultaneous pursuit of academic and commercial endeavors.     

Exclusion payments in patent settlements: a legal and economic perspective

Legal context. The application of antitrust law to assess settlementsof patent litigation raises difficult issues concerning theappropriate balance of patent law and competition policy. Recentprivate and public invocations of US antitrust law to challengesettlement agreements covering pharmaceutical patents have broughtthese issues to the forefront. The agreements share the commonfeature of an ‘exclusion payment’ from a brand-namedrug manufacturer (the patentee) to a generic drug manufacturer(the accused infringer) in exchange for a promise by the genericcompany to refrain from marketing its product for some time.US federal courts that have examined these agreements have variedin their approach and conclusions regarding the appropriateantitrust analysis to be applied to these settlements. Key points. This article argues that informed antitrust analysisof such agreements must take due note of the ‘probabilistic’nature of patent property rights. Practical significance. The article concludes that exclusionpayments fall outside the scope of a patent's exclusionary scopeand thus are subject to antitrust scrutiny. It demonstratesthat barring anticompetitive exclusion payments in settlementnegotiation prevents collusive bargains that harm consumer welfarewithout discouraging efficient settlements.     

Injunctive relief in US patent practice

Legal context. Injunctive relief is available in civil actionsin the United States. Patent litigation is no exception andthe US patent statute explicitly permits it. Because it is aneffective remedy, injunctive relief is commonly sought togetherwith the monetary (legal) remedies which are available to patentowners when enforcing patent rights. Key points. On 15 May 2006 the US Supreme Court in eBay, Incet al v MercExchange, LLC altered the prevailing practice sayingthat ‘the decision whether to grant or deny injunctiverelief rests within the equitable discretion of the districtcourts, and that such discretion must be exercised consistentwith traditional principles of equity, in patent disputes noless than in other cases governed by such standards’. Practical significance. This article will focus on the availabilityof permanent injunctions in patent infringement actions in lightof the Supreme Court's recent ruling in eBay, Inc et al v MercExchange,LLC.     

Intellectual property strategies for US security and privacy

Legal context. Some state legislatures are considering billswhich would require those applying for a driver’s licenceto provide one or more biometric identifiers. The US federalgovernment is tending towards eavesdropping on conversationsand investing in data mining efforts while on the other handanti "big-brother" technologies are also emerging to counterthis trend and protect privacy. The demand for technology toprotect privacy will no doubt increase as the demand for defenceand security spending increases. We also live in a world wherebioterrorist acts are a constant threat and therefore demandfor biological detection devices and nanotechnology is growingdaily. Key points. Current technology advances in biometrics, surveillance,biological detection and nanotechnology can be used both toprotect and to jeopardize the security and privacy of individuals.As such, the importance of intellectual property in these areascannot be underestimated. Practical significance. Companies are advised to ‘go onthe offensive’. All companies should aggressively protecttheir core technology in numerous facets such as patent protection,copyright, trade marks and trade secrets. In the high tech arenathis is especially important because the demand for securityand privacy necessitates the development of advanced applicationsand in turn the quality of protectable IP for the companiesthat develop the technology increases. Additionally, companiesshould also pursue an offensive strategy that includes analyzingemerging standards and competitor focus so that they can acquirea competitive advantage or secure cross-licensing of another’stechnology.     

Kicking butt? Tobacco Advertising and Promotion (Brandsharing) Regulations 2004

Legal context. This article looks at the provisions of The TobaccoAdvertising and Promotion (Brandsharing) Regulations 2004 implementingEU Directive 2003/33 to approximate the laws of EU Member Statesrelating to indirect advertising and sponsorship of tobaccoproducts through brandsharing. Key points. The Directive is the latest in a series of measuresto control direct and indirect tobacco advertising. Its provisionsand those of the implementing Regulations are widely drawn toprevent use of tobacco trade marks and other features indicatingthe origin of goods or services for non-tobacco products andvice versa if the effect of such use results in brandsharing.Purpose or intended effect is irrelevant—there is no requirementfor ‘mens rea’. There are defences however but absentthese, liability is assessed on the criminal rather than thecivil standard. The Directive also impacts on the procedureof the Patent Office and its assessment of whether trade markscan be accepted for registration. Practical significance. There are practical consequences tooas regards brand clearance and the extent to which identicaland similar marks for tobacco/non-tobacco goods need to be includedin clearance searches.     

基因专利保护的利弊分析

基因专利保护的问题由来已久,而争论的焦点大多集中在基因是发明还是发现的问题上。实际上,基因是发明还是发现并不是基因是否应该受专利法保护的关键。任何制度的设计都是为了促进社会发展的,如果用专利制度保护基因利大于弊,能够更好地促进基因技术的发展,就应该授予基因专利权,否则就不应该授权。通过分析可以得出,基因应该属于发现,但是以专利制度保护基因利大于弊,所以我国应该授予基因专利。     

Expansion of the US 'safe harbour' provisions--an American perspective

Legal context. Since the mid-1980s, US patent law has exemptedcertain research activities in the pharmaceutical field fromliability for patent infringement. Recently, the US SupremeCourt expanded this exemption (‘safe harbour’) byholding that any type of research activity, regardless of itstiming or phase, may be exempt from liability for patent infringementwhere it can be shown that the such activity is reasonably relatedto the development and submission of drug approval informationunder a federal law. Key points. The timing or phase of research activities is immaterialto determining whether the safe harbour provisions apply. Thecritical inquiry in determining the applicability of the safeharbour provisions is whether the activity in question is reasonablyrelated to the submission of drug approval information to theUS Food and Drug Administration (FDA). A research activity is ‘reasonably related’ to thesubmission of drug approval information where it can be shownthat (i) a drug-maker has a reasonable basis for believing thata patented compound may work to produce a particular physiologicaleffect and (ii) the drug-maker uses that compound in researchwhich, if successful, would be appropriate for submission tothe FDA. The ultimate absence of experimental data from an FDAsubmission may not adversely impact the potential applicabilityof the safe harbour provisions. Mere intent to submit informationto the FDA is insufficient; rather, intent must be coupled withactual research activities. Practical significance. The safe harbour provisions of the USpatent law are not confined to specific types of research, norare they bounded by temporal limitations. Rather, any researchactivity, regardless of its timing or phase, may qualify forprotection. Importantly, industry researchers must take careto document actual research activities and be prepared to demonstratethat such activities are reasonably related to the submissionof information to the FDA.     

The software patent debate

Legal context. This article has practical application for thoseworking in the patent field, particularly with regards to thefiling of software patent applications. Key points. The article provides a detailed explanation of thestate of the art with regards to the legal protection of software,and describes the latest legal developments in the area, includingthe failed Directive on Computer Implemented Inventions andsome recent cases that may shed more light on some of the technicalissues involved in the area of software. The paper also exploressome of the arguments put forward by those in favour and opposedto software patents, in order to ascertain their validity. Practical significance. Existing case law may provide help tosolve the problem of patentability, but it might also be a goodidea to resurrect the idea that there should be a sui-generissoftware right.     

试论新时代我国知识产权的保护与运用

新时代我国知识产权保护和运用呈现出专利授权总量与申请强度持续增长、商标注册高度活跃、专利实施率较高、知识产权行政保护与司法保护体系不断增强等新特征,但与此同时也面临着专利质量和发明专利实施率有待提高、知识产权交易市场活跃程度不足、新业态和新领域创新成果的知识产权保护滞后等一系列问题。应构建以专利质量为核心的知识产权政策体系,打造新形势下的知识产权海外预警与保护平台,推进新业态和新领域创新成果的知识产权保护,继续强化中小企业知识产权保护与援助工作,系统加强知识产权保护与运用。     

Co-ownership of patents under German law

Legal context: Co-ownership of patents is a specific form of entitlement toa patent. Thus, it stands in the legal context of the questionof who may benefit from an invention and a patent, but alsoof who has to bear the costs of it. Parties to a co-ownershipare free to determine the terms of their co-ownership. If theydo not enter into specific agreements, the statutory rules—inGermany the rules of the community of part owners—apply. Key points: The article describes the most important aspects where Germanstatutory rules do not usually address the needs of the co-owners. Practical significance: Parties are advised to agree on these points before disputesarise. In particular, they should agree on the terms of thedefence, enforcement, and exploitation of their patent. Thisapplies especially against the background of the increasingnumber and importance of joint research and development projectsand patents resulting from them.     

Whose trade mark rights? What the Microsoft case means for trade mark owners

Legal context. The article considers the influence of the commissionruling in the Microsoft case, forcing Microsoft to use its WINDOWS-trademark for an ‘unbundled’ version of the program inthe light of the trade mark owner's properties rights. The scopeof these rights is determined by the function of the trade markand the rights that the trade mark laws confer to the ownerin case of infringement. Key points. Trade marks are protected as property rights undercommunity law. They are the embodiment of past investments andtransform the reputation of the owner into a bankable asset.Consumers rely on trade mark owners' control over quality. Thisis mirrored by the rights of the trade mark owner to stop interferencewith quality and image, in particular in the context of resaleof altered products. Any interference that would be considereda trade mark infringement if committed by a private party shouldbe considered an interference with the protected property rightif caused by a government agency. This interference is not justifiedby the public interest because trade mark rights also embodyimportant public interests. Practical significance. If the analysis proposed in the articleis followed, intellectual property rights have to be given greaterweight in shaping antitrust remedies.     

Is a domain name property?

Legal context. Domain names have become increasingly valuableassets, in some respects more valuable than trade marks. A domainname may identify not only the source of the goods, services,business or information, but also the virtual location of thesource, much as an address or telephone number does. However,there is still a significant unresolved issue as to whethera domain name is a form of intangible property or merely a contractualright. Resolution of this issue is important for commercialtransactions affecting domain names and for legal proceedingsand remedies relating to them. Key points. Domain names have been analogized by courts to addresses,patents, trade marks, and even by one writer to cattle. However,in this author's view, the best way to characterize the legalstatus of a domain name is by analogy to a telephone number.Although United States appellate authority suggests that a domainname is a form of intangible intellectual property, it is submittedthat the better, but not judicially clear or consistent, viewis that a domain name is not property. This position reflectsthe practice in Canada where, in registering a .ca domain name,the registrant agrees, as a contractual condition of registration,that it acquires no property right in the domain name. Practical significance. The authorities in this area are stillnot clear. Until this issue is resolved, whether globally oron a country-by-country basis, the prevailing uncertainty willinhibit commercial transactions involving domains, such as theirtransfer and their value for the purposes of securitisation.     

Markem v Zipher--the Court of Appeal provides guidance on entitlement proceedings

Legal and practical context. The Markem v Zipher Court of Appealjudgment provides useful guidance on patent entitlement proceedingsand, more generally, on the conduct of litigation. Key points. (i) Patent entitlement. To bring an entitlementaction under sections 8, 12, and 37 a party must invoke a breachof some rule of law. Validity is only relevant in entitlementproceedings where a patent or part of it is clearly and unarguablyinvalid. A claim-by-claim approach is not appropriate in proceedingsunder sections 8, 12, and 37 and ‘invention’ inthese sections refers to information in the specification. Theproper approach to entitlement should be to identify who contributedto the invention and determine whether he has any rights tothe invention. (ii) Litigation generally. A witness should be cross-examinedas to the truthfulness of his evidence whenever a party wishesto challenge that evidence. Where a party has more than onecause of action relating to the same factual background, considerationshould be given to bringing all causes of action in the sameproceedings to avoid a future claim being struck out for abuseof process. Practical significance. This case highlights the importanceof a properly pleaded case and of the ongoing need to reviewthe case strategy throughout proceedings.     

The Vessel Hull Design Protection Act of 1998: is it still afloat?

Legal context. The Vessel Hull Design Protection Act (‘VHDPA’or ‘Act’) is a unique form of industrial designprotection under US law, part of the Digital Millennium CopyrightAct 1998. Congress provided this sui generis form of protectionin response to the Supreme Court's decision in Bonito Boatsv Thunder Craft Boats, Inc. This statute has been underutilizeddue to the difficulty in proving infringement, as unintendedconsequences were caused by the way ‘hull’ was originallydefined under the Act. A bill is pending in Congress that addresseshow a ‘hull’ is defined, eliminating any inclusionof ‘deck’ features, when passed, registrants shouldbe able to pursue infringers with greater success. Key points. The recreational boat manufacturing industry hasbeen plagued by low-cost boat makers who think nothing of takinga competitor's boat hull design, and using it as a ‘plug’to make a casting for their own unauthorized manufacturing use,a counterfeiting technique known in the trade as ‘splashing’a hull. In the eight years since enactment, the boating industryhas generally overlooked this form of intellectual propertyprotection due to the difficulty in proving infringement—thatis likely to change soon. Practical significance. The Act includes the right to excludeothers from making, having made, importing, offering for sale,or using in any trade, any boat hull embodying the protectedhull design. The Act provides compensatory recovery for damagesas well as injunctive relief. The newly revised Act has thepotential to provide a low-cost and effective form of intellectualproperty protection for recreational boat manufacturers whobuild hulls from moulded fibreglass or similar materials.     

Claim construction and the extent of patent protection: A comparative analysis of the Phillips en banc Federal Circuit decision

Legal context. The United Kingdom's House of Loads in Kirin-Amgenand the United States Court of Appeals for the Federal Circuitin Phillips addressed similar issues with respect to the methodologyof claim interpretation and the fundamental rules and policiesfor determining the extent of patent protection. This articlewill review Phillips and Kirin-Amgen from the comparative lawperspective. It will compare the UK and US rules and patentpolicies with their German and Japanese counterparts, discussingthe bases for these differences and examining them from theperspective of patent policies, specifically with respect tofair protection and legal certainty. Key points. Despite the use of the same rule and methodology,legal commentators and patent professionals emphasize the differencesin the extent of patent protection in different jurisdictions.Such differences result from the availability of the doctrineof equivalents. For jurisdictions such as the UK, the US andJapan, where courts seldom apply the doctrine of equivalents,the differences result from the way in which the courts conductclaim construction. These courts use the perspective of a hypotheticalperson to support a broad or narrow claim construction, reflectingthe weight given to the competing patent policies. Practical significance. This article cites key cases for claimconstruction and the doctrine of equivalents in four major patentjurisdictions: the UK, the US, Germany and Japan. Knowledgeof the case law trends in these jurisdictions is essential fordrafting patents documents and enforcing patents.