Post-termination use of licensed intellectual property by licensees

Legal and practical context: The ongoing dispute between Nokia and Qualcomm exemplifies thecomplex issues that arise when the licensor–licensee relationshipbreaks down. It illustrates that any means by which a licenseecan secure rights to use licensed IP after termination of alicence agreement can be of great commercial importance, notto mention significant economic value. If a licensee can continueto use licensed IP notwithstanding that its agreement has beenterminated, a licensor's ability to control and derive maximumeconomic benefit from its IP may be fundamentally compromised. Key points: The means available to licensees to secure such rights varydepending on the kind of IP right licensed, but there are severalcommon themes, which draw on a diverse range of legal rulesand concepts, including specific IP concepts and laws (includingthe rules relating to assignment and licensing, the exhaustionof rights, revocation and invalidation, and defences to infringementclaims), contract law and competition law. This article discussespractical implications to be considered when drafting IP licenceagreements. Conclusions: From a licensee's perspective, the termination of its licenceagreement is not necessarily the end of the road. Licenseesshould be aware of these post-termination rights when expectingto face difficult renegotiations with a licensor. From bothparties' perspectives, but particularly that of licensor, thisarticle should demonstrate the importance of drafting to avoidany uncertainty that may arise on the termination of a licenceagreement.     

Software interoperability, intellectual property and competition law — Compulsory licenses for abuse of market dominance

Innovation is a shared purpose of both intellectual property (IP) and competition law. However, sometimes competition law conflicts with the interests of IP holders. This paper searches for an adequate criterion of practical concordance, which consists of evaluating, in the concrete situation, which of those regulations best performs the purpose of promoting innovation. It is considered that requirements of competition law shape IP regulations, but the internal limits of protection therein identified are not enough to safeguard concerns of competition law. In particular, European courts held that, in exceptional circumstances, IP holders with market dominant position can be compelled to grant licenses of IP protected goods, such as copyrighted information and software. Such lifting of the IP exclusion power finds its rationale in preserving competition and promoting innovation, which is particularly sensitive within the dynamic software market.     

我国知识产权制度建设成效及问题实证分析——兼论我国知识产权对外交往策略

我国现代知识产权制度建设始于改革开放初期,经过30余年发展,已成为现代社会一种重要的无形财产权制度.统计数据和计量经济分析表明,我国的专利、商标和著作权制度已走上正轨,发挥着正当的制度功能,但其中存在的问题,如知识产权法实施难仍需得到正视和理性解决.对知识产权制度成效的客观评价是中国知识产权对外交往策略的基础.应保持必要的自信心,不妄自菲薄,积极采取主动与防御结合的策略,以免在知识产权对外交往中进退失据,陷于被动.尊重知识产权制度的内在逻辑,防止冒进,拒绝外部干扰,将有助于知识产权制度理性发展.     

Intellectual property laws integrated with the national development policies in China

As a developing country, China has been pressured by the developed countries to increase the levels of intellectual property (IP) protection and to adopt IP rules that even go beyond the minimum international standards. IP regimes are established to promote advances in science and culture by rewarding creation and invention. However, developing countries do not necessarily appropriately share the benefits from the harmonization of IP protection standards over the world. Fortunately, not every developed country or international organization is concerned only with its own interest when evaluating the tendency of international IP protection policies. In fact, they have made many studies or findings in favor of the concerns and interests of developing countries. This paper investigates the conflicts between IP rights and human rights, as well as the validity of IP laws under constitutional arguments, with the purpose of providing new strategic policy arguments in China’s future amendments to IP laws, and related negotiations with developed countries. __________ Translated from Faxue Yanjiu 法学研究 (Law Research), 2005, (6): 105–115     

Treatment, diagnosis--or just testing the water?

The Gowers Review of IP was published in early December. Nowthat its contents have been revealed, the IP community in Britainand elsewhere is coming to terms with its contents. Althoughthe Review proposes relatively few changes to the IP systemas we know it, many are wary of its potential impact. One reason for the wariness lies in the approach taken by theReview. The most natural avenue for investigation is that whichtackles IP rights in turn: patents,     

知识产权基本法之构建

知识产权基本法的制定意义重大.知识产权基本法,是指统一调整和规范知识财产的支配关系的法律规范.知识产权基本法为形式意义上的知识产权法,是各知识产权单行法的母法,性质为私法.我国知识产权基本法的立法应采取三步走的步骤:第一步是制定知识产权基本法,第二步是在民法典中制定知识产权法编,第三步是制定知识产权法典.     

Intellectual property (IP) protection versus IP abuses: The recent development of Chinese IP abuse rules and recommendations for foreign technology-driven companies

This paper will focus on the recent development of the Chinese IP abuse legislation and its potential impact on IP protection and the operation of technology-driven foreign enterprises in China. Firstly, it will provide a brief overview of the TRIPS's requirements on IPR abuse and technology transfer, and the recent development of IP abuse laws at the domestic level, particularly in the US and the EC. Secondly, by drawing a comparison with similar laws in the US and the EC, this paper will critically examine the recent development of the Chinese laws regarding technology transfer and IP abuse prevention, including both the recently enacted Anti-Monopoly Law 2008 (AML) and other prior-AML regulations. Thirdly, the paper will examine both opportunities and potential risks these laws may bring to foreign IP holders/technology-driven companies when operating in China, particularly focusing on the impact of the IP-related provision in the AML. Recent development in antitrust litigation in which Microsoft is a party, including the recent anti-monopoly investigation against Microsoft in China, will also be examined. Lastly, it will provide some practical suggestions for foreign IP holders and technology-driven companies to operate in China, such as useful defences against potential IP abuse claims, and other strategies for flexibly applying the IP abuse rules and better participating in future IP abuse legislative process in China.     

论国际法视野下中医药知识产权的保护

我们对于传统中医药知识产权的保护多从私权出发,从而忽视了国家在这一领域内应起的作用。本文试图说明国家在中医药知识产权国际保护中的地位应该得到加强,并且在不违背其所承担的国际义务的前提下,可以通过强化其外部贸易政策来实现这一目的。     

The Criminal Enforcement of Intellectual Property Rights in China: Recent Developments and Implications

This article systematically introduces and analyzes a number of aspects of the criminal enforcement of intellectual property rights (IPR) in China, focusing on recent trends and developments. China has been under tremendous pressure from the US to expand the criminalization of its IP infringement. The article first summarizes the substantive criminal law regarding IP offenses in China and describes the main enforcement agencies and judicial organs responsible for the investigation and processing of IP crimes. Analysis of the substantive criminal IP law and enforcement practices shows a steady pattern of rapid criminalization, not only on the books but also in action. Newly promulgated judicial interpretations and notices substantially expand criminalization of IP infringements. In addition, the enforcement rates of IP and related crimes have been rising consistently and rapidly. There have also been numerous joint meetings, information exchanges, issuance of provisions, collaborative “strike-hard” enforcement campaigns and other major efforts initiated by the police, the prosecutors, and administrative agencies to facilitate agency cooperation and strengthen the criminal enforcement of IPR. However, accompanying this rapid criminalization of IP infringement control are serious problems rooted in the Chinese criminal judicial system, including local protectionism, the lack of respect for procedural justice as well as the protection of defendants’ basic rights, and inadequate training, professional incompetence, misconduct, or corruption.     

我国知识产权法律与国家发展政策的整合

内容提要:我国就知识产权保护议题在与发达国家谈判的过程中屡遭挫败,甚至制定出“超国际标准”的知识产权保护规范。知识产权法的立法意旨在于奖励创造与发明,进而促进科学及文化的进步,但是与发达国家一致的知识产权保护标准,并不能使发展中国家从中获益。然而并非所有的发达国家或国际组织在思考国际间知识产权保护政策的走向时均固守本位主义,他们的许多支持发展中国家利益的研究成果,对我国未来制定新的知识产权法规与政策均甚有助益。应就知识产权与人权之间发生的冲突,及其与宪法基本权冲突时的优位选择理论做出探索,以此作为我国日后制定知识产权法律及与发达国家进行相关谈判的政策依据。     

Patent cross-licensing,the influence of IP interdependency and the moderating effect of firm size

This paper analyzes technological interdependency as the key factor for companies’ motivation to engage in cross-licensing transactions. It gives evidence on how the incentive effects for mutual technology transfers vary by firm size and the degree to which a firm has to rely on its competitors’ intellectual property (IP dependency). Even though IP dependency exists also among smaller firms, cross-licensing has previously only been analyzed for large firms. This paper fills this gap in the empiric literature using original survey data among German manufacturing companies. Findings suggest that the influence of firm size and IP dependency on the use of cross-licensing can not be regarded separately. While the effect of IP dependency on the relevance of cross-licensing itself has a clear positive effect this seems to be true to a higher extent for small firms and decrease for larger companies. A possible reason for the interaction effect between these two factors is that larger firms have better odds of achieving a technological workaround which can serve as an alternative to in- or cross-licensing; furthermore small high tech firms might need to explicitly use cross-licensing to secure the freedom to operate while a large firm’s patent portfolio itself can serve as an implicit insurance by posing a threat which prevents other technology holders to file patent infringement cases.     

Using after-the-event insurance and conditional fee agreements in defending weak IP claims

Legal context: As the cost of IP litigation increases, the cost of defendinga claim can be prohibitive, even if the defendant is ultimatelysuccessful. In this article, the authors consider how after-the-event(‘ATE’) insurance and conditional fee agreements(‘CFA’) can be used in IP disputes. Key points: The authors describe a recent innovative ATE insurance product,explain how ATE insurance and CFAs can be applied to IP disputes,and explain how a combination of ATE insurance and a CFA canput the defendant in a very strong position, with a high degreeof certainty of costs. Practical significance: The fact that a party has obtained offers of ATE insurance and/ora CFA indicates to the other side that (i) its solicitors areconfident of succeeding, (ii) it has obtained a favourable counsel'sopinion; and (iii) there is likely to be a substantial disparityin each side's potential costs. This gives rise to a usefuladditional benefit of a tactical advantage given to the defendant,which may lead to an early settlement on terms favourable tothe defendant.     

Software Patents - Boon or Bane for Europe?

Software patents have been making the headlines recently. Inthe EU, after the European Parliament has rejected a controversialproposed ‘Directive on the patentability of computer-implementedinventions’ in July 2005, the debate is far from over:The Commission continues to pursue policies expanding the reachof intellectual property rights, while the controversies haveexposed issues that call for a more cautious approach, demandingjustification for further extension of IP – difficultto provide in general, and probably impossible with respectto computer software, as the evolution of information technologyreveals fundamental incompatibilities with the patent system:Thorough analysis of the historical development of IP as wellas that of computers and their programs, both as a science andwith its economic implications as an industry, combined withthe international comparison of experiences with (and alternativesto) patents covering software, provide convincing reasons tokeep patent law within its established confines supported bythe European Patent Convention, separating patentable subjectmatter from unpatentable mental acts, business methods and mathematics.     

后TRIPs时代我国知识产权反垄断的立法价值选择

后TRIPs时代,我国知识产权保护水平已与世界先进国家标准接轨;但我国自主创新比例却相当低,知识产权已经成为国外知识产权权利人进人中国后封闭市场、排挤竞争对手的工具。一国的知识产权反垄断立法价值取向应当与其具体的国内外经济政治环境相适应,反映其“本土性”、“时代性”的特点。作为拥有知识霸权的发达国家,已放松了对知识产权反垄断的规制,持有利于知识产权人的立场;他们的立场与技术落后的发展中国家截然不同。我国在知识产权反垄断立法过程中,当务之急不是去寻求国外的立法技术移植;而是从战略高度确定知识产权反垄断的立法价值取向,即以社会公益为本位,强化反垄断规制。     

No room for Asia-Pacifists?

When this Journal decided to run a special issue on IP in theAsia-Pacific region, it was following the conventional wisdomof the profession and the marketplace. For many years, the conceptof the Asia-Pacific sold conferences and printed publications.And it was on this assumption that JIPLP based its decisionto give over its March issue for coverage of that zone. However,there comes a point in the life of     

知识产权惩罚性赔偿的类型化适用与风险避免——基于国际知识产权规则的视角

惩罚性赔偿制度的目的在于通过惩罚既往侵权行为而威慑未来侵权行为,其前提包括权利的确定性、侵权判断可行和过度威慑的消极影响小。知识产权的不确定性决定了它与惩罚性赔偿有着根本冲突,难以全面适用惩罚性赔偿制度。从惩罚性赔偿制度的前提和侵权行为的道德可责性出发,可对知识产权惩罚性赔偿进行类型化适用,恶意知识产权侵权行为或可适用惩罚性赔偿,一般知识产权侵权行为则难以适用。在国际知识产权规则下,既要保护知识产权,又要为正当竞争保留合理空间,知识产权与竞争的平衡才可产生最优的创新激励效果。知识产权惩罚性赔偿可能造成过度威慑,打破知识产权与竞争的平衡,妨碍知识产权法基本目标的实现。类型化适用有利于降低或避免知识产权惩罚性赔偿的制度风险。     

知识产权强制许可中的反垄断法

如何正确处理知识产权与反垄断法的关系,已经成为各国反垄断立法和执法的热点问题。2004年德国联邦法院关于Spundfass一案的判决,确立了知识产权权利人因违反反垄断法而被强制许可的两个前提条件:一是知识产权许可已经成为其他企业进入市场必不可少的条件;二是权利人的拒绝许可没有重大的合理性。知识产权的行使应当受到反垄断法的制约;解决知识产权与反垄断法冲突的方式是衡量知识产权给权利人带的经济利益和限制竞争对社会的影响。中国应尽快出台反垄断法,并尽快制定与知识产权相关的反垄断指南。     

Intellectual Property Enforcement in Asia: A Reality Check

In recent decades, Asian nations have raced against each otherin enacting the latest intellectual property (IP) laws borrowedfrom the West on the assumption that the laws would functionin the same manner as those in the West. However, the Asiannations’ dismal record of implementation of IP laws hasbecome apparent and turned into a source of dispute with theirtrading partners, chiefly the US, the European Union (EU) andJapan. The fundamental reason for the impasse in enforcement of IPin Asia, as elsewhere in the non-industrial world, lies in thehuge economic and technological gap between them and those ofthe industrial nations. Historically, the need for internationalprotection of IP grew out of the desire of a few West Europeanstates in the early 19^th century to stop imitations of creativeproducts of their citizens beyond national borders. The firstform of such protection was therefore an attempt to suppress,within national borders, illegitimate products affecting businessesoperating beyond those borders. The major concern of countriesthat became parties to IP treaties (whether bilateral, earlieron, or multilateral, from the 1880s onwards) was not howeverabout providing the same level of protection among treaty-membersbut extending any available measure or form of protection tonon-nationals. The recognition and extent of international protectionultimately hinged on the assimilation of non-national goodsto those produced within the national borders. The forms and scope of international IP protection changed dramaticallywith the introduction of the Agreement on Trade-Related Aspectsof Intellectual Property Rights (TRIPs). What TRIPs did wasto provide a level of cross-border protection that may or maynot have been existing previously within the national setting.In other words, TRIPs substituted a structure and mode of protectionthat never considered the necessity of linking with or extendingnational IP forms and scopes as a pre-condition. In short, TRIPsbecame instrumental in planting a veritable disconnect betweenthe IP laws of non-industrial countries (Non-ICs) and theirsocial and economic conditions. It did not proceed from thenation-state’s willingness or determination to have formsof protection adequate for its needs (with the discretion ofnot introducing any if it did not deem such to be necessary)but regardless of such needs. The pressure on Non-ICs to legislateon a par with the major industrial nations (disguised as compliancewith TRIPs requirements), lest they be treated as outlaws andpirates or the like, burdened them with an obligation unheardof in international law—that nations must be willing totake on board legal standards and measures even if the lattermight be detrimental to their own domestic interests. The obligationto adopt standards and measures consonant with the requirementsof the major industrial states but not necessarily with thoseof the Non-ICs was not only a major blow to the pursuit of developmentin Non-ICs but also a deadweight they have to carry forever. The circumstances in which most non-industrial nations wereforced to forego their domestic interests and accede to treatyobligations without being given corresponding minimal benefitsdeserving of sovereign contracting parties lies at the bottomof the disconnect in the protection of IP internationally. Thedenial of the prerogative of non-industrial nations as purportedlyfull sovereigns in international law to demand or foster mutuallybeneficial arrangements in IP protection has generated the disconnectand fuelled the continuity of so-called piracy across the non-industrialworld. This paper attempts to examine whether and how Asian nationshave succeeded in managing the disconnect. It starts, in section1, with a survey of the common misperceptions about the roleof IP. Section 2 then attempts a brief appraisal of the conflictinginterests and forces that condition the level, or lack, of IPlawmaking and enforcement in Asia. Section 3 briefly looks atthe external pressure on Asian Non-ICs in both IP lawmakingand enforcement. Section 4 traces the signs of change in IPenforcement in Asia. The paper concludes that, despite someemerging signs of change in attitudes and levels of IP enforcement,the very same issues will remain at the forefront of IP in Asiaand as a major source of dispute with the US and, to a lesserextent, the EU and Japan. It stresses that progress will continueto elude all parties, whether Asian or foreign.     

The role of intellectual property management education in a technology management curriculum

Should intellectual property (IP) management be considered a required course in Technology Management curricula? If so, what knowledge and skills should be conveyed in a one-semester course? What is the best way to teach this material? This paper presents evidence that intellectual property management should be of central importance to technology management (TM) programs and that professionally vital knowledge can be taught to MBA and Management of Technology (MOT) students without legal backgrounds. IP management can be seen as a curricular locus, bringing together subjects such as entrepreneurship, technology strategy, and technology transfer. At Stevens Institute of Technology, we’ve taken the position that IP Management should be taught as a distinct course in a technology management program on equal footing with more traditional course offerings such as Marketing and Finance. We reflect upon 4 years’ teaching experience and present evidence from former students that the course fulfills its mission to be professionally relevant and pedagogically unifying to technology management programs.     

A growing field

Ten years ago, you would have been hard-pressed to find a legaltextbook, even in the IP field, specifically referring to brands,branding, or brand protection. Today, however, the shelves ofspecialist legal booksellers contain a wide variety of booksrelating to branding covering the spectrum, from academic analysisof the differences between brands and trade marks to so-calledpractitioner guides on strategic protection issues. The growthin this field reflects the spread of IP rights generally inthe commercial arena and its strategic importance to businesseslarge and small. Like