Thursday, April 14, 2016

Wong-Ervin, Ginsburg, Kobayashi & Wright on FRAND in India

I've previously mentioned on this blog the comments submitted by Professor Joshua Wright and Judge Douglas Ginsburg on the Japan Fair Trade Commission's draft partial amendments to its Guidelines for the Use of Intellectual Property Under the Antimonopoly Act (see here) and on the Canadian Competition Bureau's Draft IP Enforcement Guidelines (see here).  In addition, in recent months Professor Wright and Judge Ginsburg, along with Professors Bruce Kobayashi and Koren Wong-Ervin, have published comments on similar proposals floated by competition authorities in China and South Korea (see here).  The quartet's most recent paper, Comment of the Global Antitrust Institute, George Mason University School of Law, on the India Department of Industrial Policy and Promotion's Discussion Paper on Standard Essential Patents (available here) makes some of the same points as in the above submissions in urging the Indian authority not to, among other things, equate an SEP holder's seeking of injunctive relief with an antitrust violation or to set royalty prices.   

The submission was in response to the India Department of Industrial Policy and Promotion (DIPP) Discussion Paper on Standard Essential Patents and Their Availability on FRAND Terms, which is available here.  The last date for submissions is April 22.   

Update:  Judge Ginsburg and Professors Kobayashi, Wong-Ervin, and Wright also have published a couple of short papers in CPI Antitrust Chronicle and available on ssrn presenting many of the arguments made in their country-specific comments.  See The Troubling Use of Antitrust to Regulate FRAND Licensing and 'Excessive Royalty' Prohibitions and the Dangers of Punishing Vigorous Competition and Harming Incentives to Innovate 
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In other news regarding patent remedies in India, Sandeep Rathod has posted a paper on ssrn titled Injunctions in Indian Pharmaceutical Patent Infringement Actions: Some ObservationsHere is a link, and here is the abstract:
India’s most recent tryst with pharmaceutical product patents is eleven years old. These years have seen a number of pharmaceutical patent infringement actions/suits brought on by patentees, though many of these litigations are pending final judgment as they have not yet completed trial due to various factors. The focus of the pharmaceutical patent owners/ holders (patentees) in the initial stage is clearly to secure an immediate, interim injunction against the defendants. The present article focuses only on this initial stage – i.e. the practice of interim injunctions within the domain of pharmaceutical patent infringement suits - and based on the author’s experience and review of the information available in public domain for these litigations, makes the following observations:
a) Obtaining an order of interim injunction in a pharmaceutical patent suit is not difficult for the patent owner. Indian Courts have in fact, granted interim injunctions in a majority of pharmaceutical patent infringement suits;
b) A large majority of injunction requests are filed by the patentees as ex-parte and are quia-timet in nature. The defendant may not get an adequate opportunity to present its defense before the grant of such injunctions;
c) While arguably, patent infringement suits can be filed in a host of District and High Courts, it would appear that patent owners prefer to initiate their suits and corresponding injunction requests only before the High Court of Delhi;
d) Undertakings for non-commercialisation given by generic companies also act/stand on same footing as injunctions; and
e) India will see more pharmaceutical patent infringement suits- including cases where IP owning generic companies file suits against other generic companies.

1 comment:

  1. Dear Prof. Cotter:

    Many thanks for noticing my paper and putting it here.
    Post the initial upload on SSRN, I received more information/ comments from friends and readers and I have uploaded a version 2 of the paper (the SSRN link remains the same).

    Sandeep K. Rathod