New Book on Japanese Patent Law

Readers interested in comparative patent remedies, and comparative patent law more generally, may want to take a look at a new edited volume titled Japanese Patent Law:  Cases and Comments (Christopher Heath & Atsuhiro Furuta eds., Wolters Kluwer 2019).  The volume is part of the Max Planck Series on Asian Intellectual Property Law, and includes chapters on a range of topics, including discussions of punitive damages, injunctions, and damages calculation, wrongful enforcement.

 

Here is a link to the webpage, and here is the book description:

This first comprehensive work in English on all aspects of Japanese patent law presents 66 cases with an expert explanatory commentary from academics, attorneys, judges and members of the Japanese Patent Office. This book deals with the whole range of Japanese patent law – requirements of patentability, inventorship and ownership issues, procedures before the Patent Office, scope of protection and interpretation of claims, enforcement and infringement procedures, patent term extensions, licensing and antitrust issues, utility models and more. Many of the cases appear in English for the first time.

Following an informative introduction explaining the economic importance of the patent system for Japan, the cases cover such specific issues as the following:

• definition of an invention;
• assessment of prior art, novelty and inventive step;
• rights of co-inventors;
• disclaimers, corrections and amendments;
• scope and limits of patent protection;
• distinction between repair and reconstruction;
• doctrine of equivalents;
• domestic and international jurisdiction in patent matters;
• interim proceedings and measures;
• defence of invalidity;
• damage calculation;
• patent term extension system; and
• utility models.

Each case commentary follows a uniform structure, including background, summary of the facts, analysis and comparative remarks. The latter allows the reader to put developments in Japan in an international context.

With the wealth of knowledge it makes available – leading Japanese patent cases in English translation, comparative case commentaries by leading experts on Japanese patent law, comprehensive analytical coverage of all aspects of Japanese patent law and coverage of related fields such as licensing, antitrust and civil procedure – this easy-to-use book will be warmly welcomed by patent attorneys and other practitioners (including Japanese patent practitioners advising foreign clients), patent academics and patent offices worldwide.

Research Handbook on the Economics of Intellectual Property Law

I am pleased to announce that Edward Elgar Publishing will publish the two-volume Research Handbook on the Economics of Intellectual Property Law on August 30.  Volume 1, titled "Theory," is edited by Ben Depoorter and Peter Menell; Volume 2, titled "Analytical Methods," is edited by Menell, Depoorter, and David Schwartz.  John  Golden and I contributed a chapter titled "Remedies" (an earlier draft of which is available here) to volume 2.  

Here is a link to Elgar's webpage for the book, which includes the table of contents, and here is the book description:

Both law and economics and intellectual property law have expanded dramatically in tandem over recent decades. This field-defining two-volume Handbook, featuring the leading legal, empirical, and law and economics scholars studying intellectual property rights, provides wide-ranging and in-depth analysis both of the economic theory underpinning intellectual property law, and the use of analytical methods to study it. 

Volume 1 explores the the role that economic incentives play in promoting innovation and creativity. It also examines the analogy between intellectual property and tangible property, the economics of intellectual property institutions, and the interplay of intellectual property, development, and international trade.

Volume 2 explores analytical methods used to study intellectual property law. The chapters survey data sources, the use of patent citation data, patent valuation, empirical studies of intellectual property modalities (patent, copyright, trademark, and trade secrets) and institutions, the impacts of technological change on technology and content industries, the use of experimental methods, economic history research, political economy, and knowledge commons research.

French Court: Licensee Must Pay Royalties Due Up Until Date of Nullification

The case is Thiéart SARL v. Alain B, Cour d'appel de Paris, April 5, 2019, PIBD 1119-III-311.  No big surprise, in my opinion, in the court's conclusion that the licensee must pay accrued royalties up until the date on which the patent is revoked; I think that's the rule pretty much everywhere.  The merits of the rule are debatable, though I'm inclined to think it makes sense, for reasons stated previously here; see also this subsequent post.  The court also rejected the licensee's arguments that the license contract was itself void for other reasons, and that the patentee had actionably disparaged the licensee.

New Papers, Posts on FRAND, SEP Issues, Part 4

1. Richard Vary published a short article titled The Prodigal Licensee, 40 EIPR 691 (2018), which I missed when it came out.  Here is the abstract:

Recent decisions on FRAND have used a comparable licences methodology. Some licensees argue that non-discrimination means that they should get the lowest of all previous rates. But would that discriminate against the licensees who took out a licence in the past? When comparing past licences, we also need to price in the risk taken by early licensees in agreeing rates at a time when they had less information.

2. The July 2019 issue of GRUR Int. (pp. 670-76) includes an extended excerpt of the July 12, 2018 Delhi High Court judgment in Koninklijke Philips Electronics N.V. vs. Rajesh Bansal And Ors., which I previously mentioned here and here, with links to posts by Divish Joshi.  

3.  Also regarding this case, Ashish Bharadwaj and Srajan Jain have published an article titled Philips v Bansal and Bhagirathi Electronics: India’s first decision on the infringement of a standard essential patent, in 9 Queen Mary Journal of Intellectual Property 346-50 (2019).  Here is the abstract:

The Delhi High Court considered the law and policy issues around standard essential patents in India. While the court adopted a very internationalist approach to the issue it included many unfortunate findings, which are explored here.

4.  Léon Dijkman published a post on IPKat titled Are FRAND-disputes too complex for PI proceedings?, discussing a recent Dutch case in which the court denied Sisvel a preliminary injunction against Xiaomi for the alleged infringement of a FRAND-committed SEP or SEPs.  Sisvel has another action pending in the U.K., in which it is seeking determination of a global rate.

5.  Rik Lambert also has an informative post on Kluwer about the Sisvel v. Xiaomi litigation.