Wednesday, November 16, 2016

Nagakoshi and Tamai on FRAND in Japan

Yuzuki Nagakoshi and Katsuya Tamai have published an article titled Japan Without FRANDs?  Recent Developments on Injunctions and FRAND-Encumbered Patents in Japan, 44 AIPLA Q.J. 243 (2016).  If you (or your institution) don't have a subscription to this journal, you can access it here if you're a member of AIPLA (the American Intellectual Property Law Association).  Here is the abstract:
Whether or not owners of FRAND-encumbered standard essential patents (hereinafter SEPs) are entitled to injunctive relief is an increasingly important topic in the fields of intellectual property and antitrust law around the world. Courts and administrative authorities around the world are searching for the appropriate balancing point between an absolute right to injunction and an absolute denial of injunction. This article first introduces the Japanese approach to SEP injunctive relief by analyzing the approach taken by the courts and administrative offices in two recent cases: The Intellectual Property High Court’s May 2014 opinions in Apple v. Samsung and the Tokyo District Court’s February 2015 decision in Imation v. One Blue. The subsequent section addresses the draft revision of the Guidelines for the Use of Intellectual Property Under the Antimonopoly Act published by the Japan Fair Trade Commission in July 2015, in the wake of Apple and Imation. Following these introductions to recent developments in Japan, a comparison with Europe is made. The development of case law, administrative guidelines, and private practice to enhance more clarity in FRAND declarations and "code of conduct" for parties would have an important impact on the realization of the aim of the Patent Act through encouraging both invention and affordable access to technology.
The article presents, among other things, a very interesting discussion of the abuse of right doctrine under Japanese law (and why the authors think the IP High Court departed from precedent in its application of the doctrine in Apple v. Samsung).  The authors also discuss the "license of right" procedure under U.K. and German law, whereby a patent owner can declare that it will license its patent to anyone on a nonexclusive basis; in return, the patent owner gets to pay lower maintenance fees to keep its patent in force.  (Colleen Chien has written on this subject too.)  According to the applicable laws, if the parties cannot agree upon a royalty the Patent Office will determine one.  I'd like to learn more about how the Patent Offices in the U.K. and Germany assess royalties in this situation, if indeed anyone ever invokes their power to do so.  (Maybe everyone making use of this procedure reaches agreement, and the Patent Office's power to assess a royalty is never invoked; it would be interesting to find out, one way or another.)   The authors also worry that damages under Japanese law are too low to provide an appropriate deterrent, if injunctive relief is off the table.

For previous discussion on this blog of the two cases mentioned above, see, e.g., here.  For an English language summary of the Imation case, available on the IP High Court's website, see here. For previous discussion of the IP Guidelines, see, e.g., here.  (The article above discusses the draft amendments to the guidelines, which were published in 2015; the final version of the guidelines was published earlier this year, as my blog post indicates, apparently after the article went to press.)

Hat tip to Norman Siebrasse for bringing this article to my attention.

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