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The tension between competition law and IP rights in China: What IP rights holders should know

By Charles Pommiès, François Renard, Jie Tong, and Benjamin Bai

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In April 2015, China’s SAIC released its long-awaited guidelines on curbing abuses of intellectual property rights (“IPRs”). It introduces a new basis for forced licensing of IPRs where such rights constitute an “essential facility”.

Therefore, assessing market position and reviewing licensing policies under competition law has become critical to safeguard IP rights in China. These assessment and review must be made in the markets for the products protected by IPRs, and for the technologies involved, and they should be well documented.

Rules finally adopted by SAIC after cautious process

China’s State A [...]

‘Innovation, not the income of national patent offices must be key factor in Unitary Patent renewal fee level’

Cost reductions obtained by introducing the Unitary Patent package should not be nullified by the setting of renewal fees at a high level. This would amount to the patent offices ‘clawing back’ the savings obtained instead of passing them on to innovating businesses. Lucía Caudet, spokeswoman for the European Commission told this in an interview with Kluwer IP Law. The EC supports the ‘real TOP 4′ fee level, which has been pleaded for by European business organizations.

How does the EC keep itself up to date about developments leading to the Unitary Patent and Unified Patent Court?

The Commission played a decisive role in the advent of the Unitary Patent (UP) by putting forward the prop [...]

Measuring And Improving U.S. Patent Quality

On February 5, 2015, the USPTO announced the launch of an Enhanced Patent Quality Initiative and solicited public comments on certain proposals aimed at improving patent quality, which are due by May 5, 2015. With a few weeks left in the comment period, the Office of Inspector General of the U.S. Department of Commerce issued a report on its review of the USPTO’s quality assurance program. The report is eye-opening and underscores the problems the USPTO faces in measuring and improving patent quality. 

USPTO Patent Quality Pillars and Initiatives

In the February 5 Federal Register Notice, the USPTO identified three patent quality pillars and six new patent quality initiatives  [...]

Extraterritorial acts can constitute a patent infringement in Germany

The Bundesgerichtshof (German Federal Court of Justice) in the decision Audiosignalcodierung (judgement of 3 February 2015, X ZR 69/13) confirmed the principle established in the Bundesgerichtshof decision Funkuhr II, according to which the delivery of a product to a third party in a territory outside of Germany constitutes a patent infringement in Germany if the party was aware that the product will subsequently also be imported into Germany.

In the case Audiosignalcodierung concerning contributory infringement the defendant was a Chinese company that delivered means which constituted an essential element of the patented method, inter alia, to another company in China. Following the findin [...]

Fordham Conference 2015 – Patentable Subject Matter.

Myles Jelf (Bristows LLP) talks about the difficulty with software patents. The difficulty arises from a need to identify the dividing line between the pure algorithm which should not be patentable and a technical invention which happens to use a computer. There are three different definitions between the UK, EPO and theUS.

The EPC Article 52 sets out the exclusions, including for programs for computers ’as such’. In the UK the test has stabilised to:

  1. construe the claim
  2. identify the contribution to the art
  3. does that contribution fall solely within excluded class?
  4. is the contribution technical in nature?

The second and third questions are most difficult. Useful signposts are questions abou [...]

Fordham Conference 2015 – US Patent Potpourri

John Richards (Ladas & Parry LLP, New York) identifies the problem that filing a patent involves a prior art search which is probably not as focussed as searched that occur in litigation and therefore the patent might require later amendment. The Patent Trial and Appeal Board (PTAB) takes a very strict approach to amendment in the USA. Most jurisdictions do not allow broadening of scope after grant except for the USA and Canada in specific circumstances and under strict time limit.

  • Australia allows amendment and will advertise the amendment and stay any litigation.
  • Canada allows for disclaimers.
  • EPC as originally granted did not allow post grant amendments other than in opposition proceedin [...]
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