Upcoming Talks on Extraterritoriality and Patent Remedies

On February 7, I will be speaking at Waseda University in Tokyo, and on February 8 and at a conference organized by the Graduate Schools of Law of Nagoya University and Hokkaido University, to be held in Nagoya.  My presentation at both venues is titled Is Territoriality Dead?  I don't have a draft paper yet, but here is the abstract of what I intend to present: 

Nations traditionally have viewed patents as territorial rights:  a U.S. patent is enforceable in the United States, for example, but not in Japan, and vice versa.  Recent developments nevertheless challenge this understanding of the territorial nature of patent rights, to some degree.  One set of challenges arises primarily in cases involving commitments to license standard-essential patents (SEPs) on fair, reasonable, and nondiscriminatory (FRAND) terms.  By way of example, in Unwired Planet v. Huawei an English court established the terms of a global license for the use of Unwired Planet’s SEP portfolio, even though the majority of those SEPs were granted—and most of Huawei’s accused devices made, used, and sold—outside the U.K.  Courts in the U.K. and U.S. also have been willing to grant antisuit injunctions restricting the owners of FRAND-committed SEPs from proceeding with parallel litigation in foreign tribunals.  In addition, courts in the U.S. and Canada recently have awarded damages for extraterritorial injuries stemming from acts of domestic infringement, although the precise scope of the entitlement to such damages remains unclear.  

I will argue that these developments, though perhaps inevitable and even desirable as a matter of policy, nevertheless call for caution in their application, both to reduce abuses on the part of patent owners and accused infringers, and to avoid unwarranted interference with the practice of other nations.  To this end, I propose that courts and regulators throughout the world should consider (1) developing a set of best practices for deciding under what circumstances domestic courts should stay or dismiss pending litigation, in deference to a foreign tribunal; (2) generally limiting antisuit injunctions, in the present context, to cases in which enforcement in another jurisdiction would frustrate the domestic court’s ability to render judgment; and (3) permitting damages for extraterritorial injuries subject to limitations grounded in principles of proximate causation, the relevance of noninfringing alternatives, and the avoidance of duplicative recoveries. 

For readers who may be able to attend, here is the Nagoya conference agenda:

Conference on “Patent Law from an International Perspective” and

“IP and the Public Domain”

1.     Time and Place

Time: February 8, 2019, Friday, 10:30-17:30

February 9, 2019, Saturday, 10:00-17:30

Place: Asian Community Forum, Asian Legal Exchange Plaza, Nagoya University, JAPAN

http://en.nagoya-u.ac.jp/upload_images/map2017_en.pdf (C5-3 on the map)

2.     Organizers

Organizer: Graduate School of Law, Nagoya University (supported by JSPS KAKENHI Grant Number 17H00963) (TBC)

Co-organizer: Graduate School of Law, Hokkaido University (supported by JSPS KAKENHI Grant Number 18H05216) (TBC)

3.     Program  * Titles are tentative.

Day 1: February 8, 2019, Friday
Time	Sessions
10:30-10:35	Welcome and Opening Remarks Masabumi Suzuki, Dean/Professor, Graduate School of Law, Nagoya University
10:35-12:25	PART I: Patent Law from an International Perspective Session 1: Patent System and Territoriality Moderator: Christoph Rademacher, Associate Professor, Waseda University, Japan  10:35-11:20 Thomas F. Cotter, Professor, University of Minnesota Law School, USA　 Is Territoriality Dead?  11:20-12:05 Masabumi Suzuki, Professor, Nagoya University, Japan Cross-border Patent Infringement under Japanese Law 12:05-12:25 Discussion
12:25-13:30	Lunch Break
13:30-15:20	Session 2: Patent System and Policy Moderator: Irene Calboli, Professor, Texas A&M University, USA 13:30-14:15 Yoshiyuki Tamura, Professor, Hokkaido University, Japan Looking at Patent System from an Institutional Perspective 14:15-15:00 Ichiro Nakayama, Professor, Kokugakuin University, Japan Patentable Subject Matter in Japan 15:00-15:20 Discussion
15:20-15:35	Coffee Break
15:35-17:25	Session 3: Patent and other IP in Specific Fields Moderator: Branislav Hazucha, Associate Professor, Hokkaido University, Japan 15:35-16:20 Nari Lee, Professor, Hanken School of Economics, Finland Patent and Trade Secret Trade-off - a Case of Personalised Medicine 16:20-17:05 Su-Hua Lee, Associate Professor, National Taiwan University, Taiwan Mitigating the Impacts of Pharmaceutical Patent Linkage on Access to Medicine: Comparisons between the USA and Asian Countries 17:05-17:25 Discussion
17:30-	Reception Lobby on the Second Floor of ALEP (in front of the room for the conference)

Day 2: February 9, 2019, Saturday
10:00-11:50	PART I: Patent Law from an International Perspective (Cont’d) Session 4: Patent Enforcement from a Comparative Perspective Moderator: Su-hua Lee, Associate Professor, National Taiwan University, Taiwan 10:00-10:45 Christoph Rademacher, Associate Professor, Waseda University, Japan Dancing with Biotech Patents – is Japan ready for a new enforcement system? 10:45-11:30 Hao-Yun Chen, Assistant Professor, National Taipei University, Taiwan A Comparative Study of Damages for Patent Infringement in Japan and Taiwan - In the Context of Exclusive Licensing 11:30-11:50 Discussion
11:50-13:00	Lunch Break
13:00-14:50	PART II: IP and the Public Domain Session 1: General Theory; Patent and the Public Domain Moderator: Yoshiyuki Tamura, Professor, Hokkaido University, Japan 13:00-13:45 Branislav Hazucha, Associate Professor, Hokkaido University, Japan Concept of Public Domain in IP Discourse 13:45-14:30 Li Yang , Professor, Sun Yat-Sen University, PRC Patent and the Public Domain 14:30-14:50 Discussion
14:50-15:05	Coffee Break
15:05-17:40	Session 3: Trademark/Copyright and the Public Domain Moderator: Nari Lee, Professor, Hanken School of Economics, Finland 15:05-15:50 Irene Calboli, Professor, Texas A&M University, USA Mutant Rights: Trademark Protection for Copyrighted Works and the Negative Impact on the Public Domain 15:50-16:35 Takeshi Maeda, Associate Professor, Kobe University, Japan Introduction of "Flexible" Copyright Limitations in Japan: An Alternative to Fair Use 16:35-17:20 Masabumi Suzuki, Professor, Nagoya University, Japan Restriction on IP for Public Policy Purposes: An Assessment on the Case of Tobacco Plain Packaging Measures 17:20-17:40 Discussion
17:40-17:45	Closing Remarks Yoshiyuki Tamura, Professor, Hokkaido University, Japan
18:15-	Dinner