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Wednesday, 26 January 2011

Recent periodicals

The January 2011 issue of Oxford University Press's flagship IP title, The Journal of Intellectual Property Law & Practice (JIPLP) is the first to sport its bright, eye-catching purple cover (2010 was silvery grey; 2012 is up for discussion).  The full contents of this issue can be viewed here.  As editor, IPKat team member Jeremy is very fond of all the contributions to this journal -- and all the contributors -- so he doesn't have any favourites.  However, he would be disappointed if anyone who considered himself a true patent enthusiast did not take the opportunity to read Christopher Wadlow's "The professor, the patent, and the perilous life of the PHOSITA" (abstract here).


The latest issue of the John Marshall Law School's Review of Intellectual Property Law (volume 10, issue 2) is now available online here.  This issue includes a special dedication to the former Chief Judge of the United States Court of Appeals for the Federal Circuit, Paul R. Michel. Among the topics covered is a discussion by Wu Wei-hua of international arbitration as a method for resolving patent disputes, and there's a note by Jacobi M. Fields on fraud liability in respect of false statements made to the USPTO in the course of US trade mark registration [the IPKat has often wondered about some of the statements which, per OHIM Board of Appeal proceedings, appear to have been made to OHIM and which have struck him as having the ring of not-quite-true about them -- so should be follow the American lead?].


Another online journal, this time from the other side of the Atlantic, is Scripted, the delightfully erudite and often challenging publication from the University of Edinburgh's IP folk.  Volume 7, issue 3 is now at your disposal (contents here).  What the IPKat likes about Scripted is that it forces him to look beyond IP itself to adjacent disciplines in which IP plays a part, such as -- in the case of this issue -- genetic testing, the right of withdrawal from electronically entered contracts and even Nano poems.  But then, this is a journal of law, technology and society, and its editorial team make sure it sticks to its brief! The IPKat's pick this time round is by Naomi Hawkins (University of Exeter) for her article (which you can read in full here) "Human Gene Patents and Genetic Testing in Europe: a Reappraisal":
"Popular and academic objections to patents over human genes are legion. Although some concerns about the negative impact of these patents have declined recently, questions persist as to the effect of gene patents on genetic testing. This paper undertakes a timely reappraisal of the patentability of human genes in Europe, by reference to EPO and English case law, and demonstrates that isolated DNA and the associated diagnostic tests remain patentable in Europe, although recent cases indicate a sensible tightening of the patentability requirements. The paper concludes by considering the potential for gene patents to affect the provision of genetic testing services".

Not a journal, this time, but a poddie with accompanying transcript.  It's another “Beyond the Book” production from the Copyright Clearance Center in which CCC's very own Chris Kenneally explores, together with a selection of guests, numerous Digital Rights Management (DRM) challenges facing the entertainment and media industries in attempting to manage content and control distribution to an ever-larger [and more disenchanted, mewses Merpel?] customer base. Poddie here; transcript here.


The perennially popular Managing Intellectual Property magazine for December/January leads with a 'Ten for Ten' cover story, reviewing the ten biggest cases of 2010.  Of most excitement to the IPKat is a piece by a four-strong team from Allen & Overy on the absurd, unjust and (he hopes) soon to be eradicated principle which the Court of Appeal for England and Wales upheld by a 2-1 majority in Coflexip v Stolt that a patent owner can collect infringement damages even when the patent is subsequently ruled to be invalid.  Among other attractions this issue contains a useful survey of six countries in which the courts are happy (or not) to entertain trade mark surveys. Visit the MIP website here for further information.


Looking ahead, since we're still Januarians, the February-March 2011 issue of the ever-fatter World Trademark Review (WTR) opens with a selection of views on what are sometimes termed "zombie brands" -- once-popular but now effectively dead trade marks that suddenly find their way into trade mark auctions and, at least in theory, back into the market.  The WTR's pretty covers can't be uploaded on to the IPKat's pretty weblog any more since they're .ashx files, so here's a picture of a blank screen instead.

8 comments:

Anonymous said...

IPKAT obviously get free access to journals such as MIP in return for advertising, but unfortunately I can't read the Allen and Overy article.

Clearly an interesting case (cofelixip), but what if damages had already have been paid? Should it be handed back? Should all damages be held on trust for the benefit of the patentee until the end of time when it can be certain that no more invalidity claims will be filed?

What about patent settlements? Maybe they should be repaid at a later date too? And hold payments to employee inventors in trust too, just in case the benefit to the employer is reclaimed?

Maybe damages should be paid to 3rd parties who refrained from infringing the patent because it was considered to be valid? If someone invalidates the lipitor patent then I'm going to claim a few billion in lost earnings.

Sometimes fariness isn't as attractive when you extrapolate into all possible scenarios.

Jeremy said...

@Anonymous. First, re "IPKAT obviously get free access to journals such as MIP in return for advertising". The IPKat has no arrangements with any journals. The John Marshall IPLR and Scripted are both freely available online, so the idea of freebie-for-ads is irrelevant there.

This Kat's connection with MIP is a long one: he set it up, was its first editor and, since selling it to Euromoney nearly 20 years ago, has had a long and close relationship with it. If you want to get hold of an article, MIP offers a 48-hour free trial which might be useful.

If you really think that the various fanciful scenarios which you list in your comment are comparable with a situation in which tribunal A awards infringement damages before tribunal B has adjudicated on the invalidity of a patent, send me a few paragraphs to that effect and I'll happily host them on this blog. If your argument carries the day, fair enough.

Anonymous2 said...

I find symmetry a convenient tool by which to assess fairness. In Jeremy's scenario, there is no symmetric treatment of the parties - the first defendant would obtain multiple bites at the "damages cherry" until the patent is invalidated, whereas the patentee has no second chance once invalidity has been found. Turn the Tribunal B and A decisions around, and it is clear that as the law stands, tribunal A cannot hold the patent valid after tribunal B has held it invalid because once that has happened it is curtains for the patentee. So if the patentee is going to be fixed with finality, it is only fair that the same should apply to defendants.

In fact, of course, a defendant does benefit under the present system because while the damages liability remains - dealing with a crystallised liability in the past - the injunction into the future is nugatory because there is no longer a patent capable of being infringed. So the defendant already has had a leg up and doesn't need more.

It might pay the defendant in Tribunal B to drop the counterclaim for revocation and just pursue the invalidity defence. No inconsistent decision can then be created, and the B defendant is not placed in the invidious position of getting the A defendant off the hook by doing a better legal job. On the other hand, the scenario Jeremy preferred above is one that rewards the first defendant for the risk and expense borne by the second defendant and provides the patentee with no finality in litigation. It provides the first defendant with a second bite at the cherry that is not available to the patentee. It incentivises the first defendant to delay settlement or refuse to settle.

The key point in the Coflexip case is that the decision on damages is already a done deal. The only remaining question is quantum and it is just a question of timing and convenience that quantification of the liability is delayed to a later date. In other words, the damages inquiry is properly seen as teasing out the detail of an accrued right, and not deciding on new rights.

Which, in short, means Coflexip was rightly decided. Patent validity as a relative concept is already deeply embedded in the law - it is why there is no repayment of licence fees, settlement payments or accrued damages following a finding of invalidity. The risk of a patent being valid or invalid is a variable that is factored into all dealings with patents, and rightly so. It creates a value spectrum leveraging the perceived likelihood of validity, from rights that look decidedly dodgy and are valued and treated cheaply, to rights that look as good as you get and are valued highly. If payments were subject to retrospective correction after an actual finding of invalidity, then that raises risk and cost for the patentee which will tend to raise the immediate price for licensees for dealing with the patent, and thus make agreement more difficult to achieve and litigation more likely. It would be no more constructive to argue that historic payments should be retrospectively raised following a finding of validity, because the previous probabilistic assumptions about validity are resolved. The system is far better to stick with the treatment as is.

Jeremy said...

@Anonymous 2: I'm afraid I don't find symmetry a convenient tool, or even a relevant one, when it comes to assessing fairness, which makes it a little difficult for me to accept the conclusions based on the premise that it is.

Anonymous said...

My first scenario is a small extension of the Coflexip case. Why should the mere fact that a cheque has been handed over, or agreement between the parties has been signed on an amount to pay in settlement, change the question of fairness?

How is such a scenario 'fanciful' (overimaginative and unrealistic)?

In the real world, actions have consequences. Points of principle, law, or fairness, cannot be applied to a single case without considering the wider implications.

If a 3rd party had lost billions in revenues due to an earlier injunction then what is fair about that? How is the Coflexip scenario different? But then these situations never occur do they? They are simply the product of my fanciful imagination.

As for the free 48 hour trial I am waiting for the right article to come along before using it up.

Anonymous said...

I disagree with the arguments on symmetry.
One has to remember that a patent right, in itself, is a disymmetrical right.
So before even considering if a defendant has a leg up or not in case of injunctions, one has to consider that the patentee has the initial leg up : he has a monopoly; his monoply is considered as rightful prima facies ; the patentee doesn't have to demonstrate the validity of it's patent, only the absurdness of the defendant arguments ;
the tribunal doesn't search for the flaw nor are doubts sufficient : the defendant has to find a convincing flaw. It seems the patentee is advantaged in any liability.

The question is: what right has the patentee to reclaim damages once his patent is invalidated....


I listened to Anonymous2 arguments on symmetry and the issues that could be created...

I agree with some of the scenarii created and the risk enclosed, but I find the coflexip decision awful as the patentee claims damages ... that are not his to claim as in fact he is no more a patentee. As he is no more patentee, legally he can't have been infringed, and thus has no right for damages. His only basis to claim money is as "winner" of a now baseless litigation.

For "not paid yet damages"...?
I'm not sure it is advisable, in the name of faireness, that the no-more-patentee get paid for right he has no more.

I see at least some options :
1) In the name of faireness, the already paid damages should not be paid back (the defendant had to find the good arguments) + we would never hear the end of any litigation case as 15 years later one might have to pay back.

2)For faireness, a condemned party always pay as it was judged (with a final decision) as in the coflexip decision... the defendant has a final injunction to pay damages.. so he has to pay it.
But the money shouldn't go in the no-more-patentee's pockets. Maybe the damages-to-be-paid go to a national IP association/insurance/ to the court/justice department...

3) the defendant can ask to be paid back for undue damages payment with a limitation period : if the patent is invalidated more than X years after a final decision, the defendant has to pay the unpaid damages and is not paid back. (that would be a fairer than the coflexip decision .. but there is no legal basis for this 3rd option)

PdL said...

about the cover: go to the site in Internet Explorer (not firefox, chrome), right click, save picture as, and it is saved as issuethumbnail174x225.png, which looks all normal to me.

The Bright Spark said...

You have to define a time after which it is too late to get your damages back, even if the patent is revoked later. Otherwise you could have defendants seeking to recover from patentees years and years after they paid their damages.

The only logical and fair date is the date on which damages are ordered to be paid (even if the amount to be date is left to be determined later).

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