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.