Van Dongen on Sustainable Destruction of Patent-Infringing Goods

Lisa van Dongen has posted a paper on ssrn titled Sustainable Destruction of Patent Infringing Goods: An Oxymoron?  (Hat tip to Jorge Contreras for calling this paper to my attention.)  Here is a link to the paper, and here is the abstract:

This paper explores the feasibility and attractiveness of alternative solutions to destruction based on the Customs Enforcement Regulation (Regulation 608/2013), the IP Enforcement Directive (Directive 2004/48), and the UPC Agreement. It finds that the current European system actually undermines the ability of actors involved to opt for more sustainable alternatives to the destruction of infringing goods, despite the increasing awareness that the destruction of infringing goods is generally not the most sustainable remedy a patentee has at their disposal. Indeed, a lot can be said about the cost to the parties involved, the environment, society and those who could have directly benefited from the infringing products when products are recalled and destroyed. This is true for most-if not all-infringing products in varying degrees, but this is especially contentious when it involves goods such as medicines and medical devices. Unfortunately, alternatives to a destruction order are currently complicated or even curtailed by a number of factors. One obstacle is the Customs Enforcement Regulation, which does not allow much room for an alternative route once the rights holder has asserted their rights. While the IP Enforcement Directive prescribes the application of a proportionality test by courts considering the seriousness of the infringement, the remedies ordered and the interests of third parties, it depends on the corresponding national provisions and case law how much effect is given to this precondition. Last, even if patentees are open to alternatives to requesting an order for destruction, finding an alternative that would accomplish the same without costing more may not be straightforward as a practical matter. The chapter concludes with a few final thoughts on the way forward.

This is a very good paper, both in terms of its analysis and its description of the current state of the law in the EU.  I’m also gratified by the paper’s generous citations to my article with Professor Shen on the destruction remedy, and to foundational work on sustainability by Professor Charlotte Vrendenbarg.

From Around the Blogs

1.  On Sufficient Description, Norman Siebrasse published a post on Rovi Guides, Inc. v. BCE Inc., 2022 FC 1388.  This is well worth a read, for its discussion of, among other matters, patent holdup, the standards for awarding an accounting of profits under Canadian law, and the right to injunctive relief under Canadian law.  I previously published a short write-up on the case here. 

2. Also relating to Canada, on Law360 Jasmin Jackson published a short article on the recent Supreme Court decision in Nova v. Dow.  I published a short post on this one last week, in which I expressed agreement with the dissenting justice.  Professor Siebrasse will, I believe, provide a more detailed treatment sometime soon.

3. Over in India, the Delhi High Court recently denied Nokia an interim royalty in its SEP/FRAND dispute with Oppo.  The court holds that such relief is not available in this case, given the dispute whether any of the asserted patents are SEPs, whether they are valid and infringed, and if so what an appropriate FRAND  royalty would be.  I thank a reader for sending me a copy of the decision.  There are also write-ups on SpicyIP and on FOSS Patents, both with links to the decision.

4. Also relating to SEPs is a post by Eileen McDermott and Inna Dahlin on IP Watchdog, describing a recent panel discussion on the evolving European case law.

5. Also relating to Europe, IPKat published a post by Jan Jacobi discussing a recent Opinion of the Advocate General in a case, referred from Poland, in which the CJEU will consider under what circumstances a putative IP owner may obtain information from an alleged infringer under article 8 of the Enforcement Directive.  The case before the court involves defendants who dispute whether there is an enforceable copyright in the relevant subject matter  in dispute; the author of the post argues that the AG focuses too much on the quantum of evidence needed to establish the identity of the owner of a right, as opposed to whether the right itself exists.

6. Finally, Anders Valentin published a post on the Kluwer Patent Blog discussing a Danish High Court decision holding that a court cannot issue a preliminary injunction prior to the granting of a patent.  The case affirms the conclusion reached by the lower court, and by some other courts in Europe recently, in an ongoing multi-country dispute involving the drug Fingolimod (previously discussed on this blog here and here).    

Forthcoming Book on Injunctions

Jorge Contreras and Martin Husovec have a new edited volume coming out, titled Injunctions in Patent Law: A Trans-Atlantic Dialogue on Flexibility and Tailoring (Cambridge Univ. Press).  They recently posted the table of contents and a chapter titled Issuing and Tailoring Patent Injunctions – a Cross-Jurisdictional Comparison and Synthesis on ssrn.  Here is the abstract for what they posted:

 

This chapter is from the edited volume "Injunctions in Patent Law: A Trans-Atlantic Dialogue on Flexibility and Tailoring" (Jorge Contreras & Martin Husovec, eds., Cambridge Univ. Press, forthcoming). It offers a unique analytical synthesis of eleven national and two regional/international descriptions of flexibilities in patent remedies authored by leading scholars in the field. This synthesis identifies a range of similarities and differences among jurisdictions, explains the principal features of these different legal systems, provides an analytical framework for comparing them, and offers observations about trends and the outlook for the future. The countries studied include Canada, Finland, France, Germany, Israel, Italy, Netherlands, Poland, the United Kingdom, and the United States, with additional commentary on the European Union and the World Trade Organization TRIPS Agreement.

 I understand the book will be available on an open-access basis.