Thursday, October 9, 2014

Luginbuehl and Ganea's "Patent Law in Greater China"

IPKat recently profiled, and the University of Minnesota's Law Library just acquired a copy of, a new book published by Edward Elgar titled Patent Law in Greater China (Stefan Luginbuehl & Peter Ganea, eds.).  As the title suggests, the book discusses patent law not only in the PRC but also in Taiwan, Hong Kong, and Macau. Among the contributors of individual chapters are some of the lawyers and academics whose commentary I found useful in writing my own book, including Professors Luginbuehl and Ganea, Cao Jingjing, Douglas Clark, and Thomas Pattloch.

Readers of this blog may find of particular interest chapter 13 ("Patent Infringement Procedures and Remedies," by Olive Pfaffenzeller) and chapter 18 ("Standard-Essential Patents and Injunctive Relief"), by Cui Guobin).  Chapter 13 includes a section on remedies that provides a good overview of Chinese law relating to injunctions and damages in patent cases, and a separate section on interim measures that provides an overview of the law of preliminary injunctions (all of which topics I also discuss in my book at pp. 346-60 and/or on this blog, see here and here).  (In addition, chapter 14 of Patent Law in Greater China, titled "The Interplay Between Infringement and Invalidity Proceedings" by Nils Heide, briefly discusses the interplay between invalidity proceedings and preliminary injunctions, at pp. 268-69.)  Chapter 13 also includes a section on customs protection (a topic I only mention in passing in my book, at p. 353 & n.86), and on "measures for the protection of patent rights during exhibitions" (a topic I do not discuss).  Yet another section, titled "Future Prospects," discusses some measures that are under consideration for inclusion into the Fourth Amendment to the Chinese Patent Act.  As Mr. Pfaffenzeller notes, a planned amendment to article 61 of the Chinese Patent Act would make it easier for patent plaintiffs to obtain the necessary information from the defendant to support a claim for lost profits damages, and a possible amendment to article 65 would allow courts to award treble damages for willful infringement (see also my blog posts on this topic here and here, and this one noting that a similar measure has recently been re-adopted into the patent law of Taiwan.)    

Chapter 18 provides an overview of SSOs and FRAND commitments generally, and then devotes attention to the question of whether under Chinese contract law a FRAND commitment constitutes an offer to license or a third-party beneficiary contract.  Mr. Cui argues that, contrary to the view expressed in a Chinese law review article by the judges who heard the Huawei v. InterDigital case, a FRAND commitment can constitute an offer, even though the price remains to be determined (pp. 347-49).  Mr. Cui notes the various possible interpretations of Chinese contract law regarding third-party beneficiaries but believes that a court could interpret the FRAND commitment as such a contract as well (pp. 349-52).  Under either interpretation, a court could refuse an SEP owner's request for an injunction (p.359).  Mr. Cui also argues that a Chinese court might apply the Chinese law of patent remedies to deny an SEP owner an injunction (pp. 354-55).  Finally, the chapter discusses the possibility of denying an injunction under the Antimonopoly Law, and includes a brief discussion of the Huawei case (pp. 356-58).  (For previous discussion of that case on this blog, see here, here, and here.)   A brief appendix to the chapter is titled "Comments from a European Perspective" and is authored by Heinz Goddar, Jan Bernd Nordemann and Christian Czychowski.

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