Samsung Can Enforce FRAND-Committed Patents in Japan

In a dispute between Apple and Samsung, the Japanese Intellectual Property High Court has ruled that damages may be awarded for infringement of a standard-essential patent (SEP) which is subject to a commitment to licence on fair, reasonable and non-discriminatory (FRAND) terms, and that this is not an abuse of the patent if the amount claimed is within the licence fee.

The following report of this recent Japanese ruling in the long-running global dispute between Apple and Samsung has been provided by Daisuke Miyamura of the Ohtsuki Patent and Trademark Law Firm, which is based in Osaka. 

Overview

A series of lawsuits regarding smart phones are being fought between Apple and Samsung all over the world.  In Japan, Apple has filed suits against Samsung four times, and Samsung has filed suits against Apple three times.  On 16 May 2014, the Grand Bench of the Intellectual Property High Court handed down its decision in one of these cases, on an appeal by Samsung against the decision of the lower court granting declaratory judgment in favour of Apple. 

Apple had originally argued that its acts, such as production, transfer and import of products did not constitute infringement of Samsung’s Japanese patent no. 4642898, and demanded declaratory judgment ruling that Samsung had no right to an award of damages based on infringement of the patent right.

The original court decision concluded that some of Apple’s products were included in the scope of the present patent.  However the original court also determined that enforcement of an award of damages based on the Samsung patent was the abuse of the right, and granted all of Apple’s requests for declaratory judgment.

Samsung appealed against the original court decision.

The Grand Bench of the Intellectual Property High Court has now ruled that enforcement of the right to damages based on the Samsung patent is an abuse of the right if the compensation exceeds the licence fee based on the FRAND obligation, but is not an abuse of the right if the compensation is within the license fee based on the FRAND obligation.

 Read full article ► 

Tags: Apple-v-Samsung, Damages, FRAND, Injunctions, Japan

Pharmaceutical Extensions of Term: Is It Time for a Fix?

In light of news from Europe today, via the IPKat, it is becoming ever more clear that the law in Australia regarding the grant of extensions of term for pharmaceutical patents is flawed, and out-of-step with all of our major trading partners.

We have covered this topic before, most recently in the article Australia Slips Further Out-of-Step on Pharmaceutical Extensions, in which we highlighted the disparity between the Australian law and its Japanese counterpart.  We had previously discussed the difference in approaches between Australia and the US.  A new ruling from the Court of Justice of the European Union (CJEU) now establishes that a similar disparity exists between Australian and European law and practice.

The upshot of this is that patentees in Australia may obtain a shorter term of protection for various classes of pharmaceutical inventions, when compared with trading partners such as the US, Europe and Japan.  While some may see this as a benefit – shorter patent terms mean earlier availability of generic competitors, resulting in lower prices – the flip side is that jurisdictions with lesser protections tend to seen as less attractive for investment.  This may mean less funding for R&D to be conducted in Australia, fewer innovative drug manufacturers operating in this country, and a reduced focus on the specific needs of the Australian community and environment.

If Australia wishes to stand side-by-side with other advanced developed economies, to maintain and develop local capabilities for drug discovery and development, reduce its reliance on primary industry, and progress along the path of becoming a ‘knowledge economy’, we need to ensure that the laws protecting IP in this country are on a par with those nations against which we would compare ourselves.

As matters stand right now, this is clearly not the case when it comes to patent protection for pharmaceutical inventions.

 Read full article ► 

Tags: Australia, Europe, Extension of patent term, Japan, Pharmaceuticals, UK, US

Australia Slips Further Out-of-Step on Pharmaceutical Extensions

On 28 April 2011, the Japanese Supreme Court ruled that a term extension can be allowed for a patent covering a subsequent therapeutic product based on the same active ingredient as a product having an earlier regulatory approval date.  This decision further confirms that the approach taken in Australia is at odds with many of the nation’s major trading partners.

We have written previously about pharmaceutical extensions of term (see Pharmaceutical Extensions and International Inequities).  The basic principle is simple enough – where a patentee experiences delays in its ability to exploit a patent due to the requirements of obtaining regulatory approval (e.g. permission to market a drug for treatment of humans), it may apply for an extension to the normal 20-year patent term as whole or partial compensation for such delays. 

To prevent the patentee from unfairly extending its monopoly, there are restrictions on the grant of an extension of term.  In particular, it is generally the case that an extension is only available on the basis of the first inclusion of a therapeutic product on the relevant register.  Thus a subsequent patent, directed perhaps to some variation, improvement, or new delivery method, might not be eligible for extension if the active ingredient had previously been registered in its own right.

The recent Japanese decision appears to adopt a more lenient approach to such restrictions than is currently the case in Australia, and seems more in line with the US approach.

 Read full article ► 

Tags: Australia, Extension of patent term, Japan, Pharmaceuticals, US