Monday, July 22, 2013

Rademacher on injunctions in the U.S., Germany, and Japan

Shortly before I left for Munich last month Professor Toshiko Takenaka sent me a copy of her new edited volume, Intellectual Property in Common Law and Civil Law (Edward Elgar 2013).  I haven't had a chance to read very much of it yet, but it appears to have a wealth of interesting material from a variety of well-known contributors, including Professor Takenaka herself, Joseph Straus, Frédéric Pollaud-Dulian, and Marketa Trimble.  

With regard to patent remedies in particular, Professor Christoph Rademacher has contributed a chapter titled Injunctive Relief in the US, Germany and Japan:  Recent Developments and Outlook.   The chapter begins with a good overview of injunctive relief in the U.S. courts following the eBay decision and in the ITC.  It then continues with a discussion of German law, which generally views injunctive relief as an entitlement unless the conditions for granting a compulsory license under either competition law (the Orange-Book-Standard defense) or patent law are present.  In practice, German courts rarely grant compulsory licenses under either regime.  

With respect to Japan, Professor Rademacher notes that there has been a good deal of discussion concerning whether to adopt an eBay-like rule, but that "[i]n light of the low success rates of Japanese patentees in Japanese patent infringement lawsuits and the difficulties defending the validity of plaintiffs' patents, the consensus in the Japanese patent community has been to refrain, at least for the time being, from introducing any measures that would result in further weakening the status of the patentee" (p.341).  (For discussion of win rates and invalidity rates in Japan, see also my book at pp. 298-300.)  The chapter concludes with a discussion of the possibility, in Japan, of avoiding an injunction by asserting a patent misuse defense (unsuccessfully raised in Canon v. Recycle Assist), or by seeking a compulsory license.  Regarding the latter,  Professor Rademacher suggests (at pp. 343, 344-46) that a nonpracticing entity that merely licenses its patent would not be viewed as "practicing" the invention and therefore might be vulnerable to compulsory licensing under section 83 of the Japanese Patent Act; unlike section 93, this section does not require a showing that the license is necessary to serve the public interest.  Apparently there are no cases, though. 

Professor Rademacher has previously published The Enforcement of Patent Rights in Japan, 20 IIP Bull. 1 (2011), which I cite in my book at p.331 and which is available here; and a book, Die Gerichtliche Duchsetzung von Patent- und Markenrechten in Deutschland, Japan und den USA (2010). 

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