Okakita on Limits on Injunctive Relief in Germany and Japan

Yuhei Okakita has published a paper titled Limitation of Injunctive Relief in Germany and Japan in the September 2020 issue of A.I.P.P.I.-Journal of the Japanese Group of AIPPI, pp. 293-302.  Here is the abstract:

The improvements in the performance of computers and the development of innovative technologies such as AI, IoT, Blockchain have ushered in an era known as the Fourth Industrial Revolution.  As society changes, the intellectual proeprty system needs to be updated in line with the new era.  Under these circumstances, the right to seek an injunction, which is one of the core rights of a patent, has become one of the main issues in Germany and Japan.  To follow the latest situation in both countries, this paper first reviews the arguments regarding the limitation of the right to seek an injunction.  Next, an overvew of the draft amendments to the German Patent Act published in January 2020 and the opinions submitted in response are described.  Then, the deliberation status in Japan is presented.  In particular, the contents of the report of the Intellectual Property Strategy Headquarter and the latest discussions at the Patent System Subcommittee is outlined.

The article notes that in both the German and Japanese systems, the general rule to date has been that the prevailing patent owner is entitled to an injunction, except for SEP cases in which competition law or the abuse of rights doctrine may provide some leeway.  The article also notes the ongoing deliberations in Germany over the proposed amendment to article 139, which would clarify that that courts have authority to stay injunctive relief in some cases.  (For previous discussion on this blog of the German proposal, see here, here, here, here, and here.  For a more up-to-date account of why, unfortunately, the German proposal probably isn't going to amount to anything, see this post on FOSS Patents.)  Of particular interest to me was Mr. Okakita's summary of discussions held in 2020 by the JPO's Patent System Subcommittee, on whether there should be some codification of factors that might result in a denial of injunctive relief under the abuse of rights doctrine (particularly in cases brought by PAEs, in SEP cases, and in other complex product cases).  According to the author, for example, the Japan Patent Attorneys Association (JPAA) "raised the following points as factors to be considered to determine whether an injunction request is abuse of right: (i) the degree of contribution of the patent to the whole product, (ii) SEPs or not, (iii) to what extent the patentee has implemented the invention, (4) the amount of damages the patentee incurs and the likelihood of recovery by compensation for damages, (5) the subjective aspect of the patentee/alleged infringer, (6) the amount of damages to the infringer."  The author also points out, however, that for now "there is no concrete proposal for amendments."  I am heartened to see, however, that these issues are getting some serious consideration.