IP Litigation Research Articles

One Lawsuit, Two Signals: The Two-Sided Influence of IP Litigation Reputation on R&D Collaboration

One Lawsuit, Two Signals: The Two-Sided Influence of IP Litigation Reputation on R&D Collaboration

Types of common R&D partners and knowledge leakage to rivals: The role of IP litigation reputation

We argue that knowledge leakage may occur between rival firms through indirect ties, i.e., if rivals collaborate on R&D with a common partner, but that firms with an aggressive reputation for IP litigation may be able to restrict such knowledge spillovers. We argue that knowledge leakage is more prominent, and litigation reputation is less powerful, when the common partner is a university or public research institution adhering to the open science paradigm, compared with when the common partner is another (non-rival) firm. Patent similarity analysis among dyads of leading pharmaceutical firms provides support for these hypotheses.

A Shift from State’s Exclusivity to Respecting Party Autonomy: Conceptualising IP Arbitration in India

The consumer-based and technology-driven economy has triggered competitiveness amongst companies. In the ever-evolving market space, the companies have recognised the significance of generating intangible assets such as trademarks, patents, and trade secrets to remain competitive. Due to globalisation, international business transactions with respect to these intangible assets have led to an increase in intellectual property disputes. Moreover, due to IP's complex nature, the risks involved in IP litigation can be burdensome in cross-border IP disputes coupled with the Court’s cumbersome procedure. Given that the stakeholders prefer out-of-court dispute resolution systems like arbitration to resolve their commercial disputes, arbitrating IP disputes is slowly gaining traction. Even though India’s courts have expressed their leaning towards arbitrating IP disputes, the same has become practically impossible due to various impediments in the existing mechanism. This article surveys the current IP arbitration regime and uncovers the existing impediments and loopholes in IP arbitration. Further, the article explores the possibility of liberalising the IP arbitration regime by taking cues from jurisdictions across the globe.

R&D Collaborations with Common Partners and Knowledge Leakage to Rivals: The Role of IP Litigation

R&D Collaborations with Common Partners and Knowledge Leakage to Rivals: The Role of IP Litigation

Small firms and patenting revisited

In order to observe a patent application at the firm level, two conditions need to be met: new products need to be of patentable quality, which depends both on the degree of novelty of innovations and on the total number (portfolio) of innovations; and the benefits of patents need to be higher than the costs of owning them. Analyzing the patent propensity of small and large UK firms using a novel innovation-level survey (the SIPU survey) linked to Community Innovation Survey data, we find that when we consider the whole innovation portfolio, smaller firms do patent less than larger firms. However, using data on individual innovations, we find that smaller firms are no less likely to patent any specific innovation than larger firms. We argue that size differences in the probability to patent relate primarily to the “portfolio effect,” i.e., larger firms generate more innovations than smaller firms, and therefore are more likely to create one or more which are patentable. As for the decision to patent a patentable innovation, we find that cost barriers, more than issues of innovation quality or enforceability, deter small firms from patenting specific innovations. Measures to address the costs of patenting for smaller—perhaps by considering patents as eligible costs for R&D tax credits—and/or subsidizing SMEs’ participation in IP litigation schemes may both encourage patent use by smaller firms.

Putting Right Holders in the Centre: Bolagsupplysningen and Ilsjan (C-194/16): What Does It Mean for International Jurisdiction over Transborder Intellectual Property Infringement Disputes?

This paper analyses what the decision in Bolagsupplysningen and Ilsjan (C-194/16) means for international jurisdiction under EU Regulation No 1215/2012 with respect to transborder intellectual property infringement disputes. In this case, the Court of Justice of the European Union extended “the centre of interests” basis of jurisdiction under Art. 7(2) of EU Regulation No 1215/2012 to legal persons claiming infringements of personality rights on the internet. The Court also held that actions for rectification and removal of content infringing personality rights may not be brought before the courts of a Member State where the content is accessible. This article concludes that the centre of interests basis of jurisdiction is generally not applicable to right holders claiming infringements of intellectual property rights and/or complementary tort claims, except arguably for claims for the infringement of moral rights and unfair competition claims where the act exclusively affects the interests of a specific competitor. Many questions remain with respect to the localisation of a victim’s centre of interests. In addition, the article concludes that the judgment in Bolagsupplysningen does not affect a right holder’s ability to obtain an injunction in the Member State in which content accessible on the internet infringes a forum IP right to put an end to the infringement in that State. Still, the centre of interests basis of jurisdiction has the potential to give right holders an advantage for claims of online infringements of moral rights and acts of unfair competition that exclusively affect them and it can be expected that authors and traders will take advantage of this opportunity when considering their IP litigation strategies.

Reverse use of Article 7(5) Brussels Regime in IP litigation: can you sue from the establishment?

Reverse use of Article 7(5) Brussels Regime in IP litigation: can you sue from the establishment?

New Evidence on Determinants of IP Litigation: A Market-Based Approach

We contribute to the economic literature on patent litigation by taking a new perspective. In the past, scholars mostly focused on specific litigation cases at the patent level and related technological characteristics to the event of litigation. However, observing IP disputes suggests that not only technological characteristics may trigger litigation suits, but also the market positions of firms, and that firms dispute not only about single patents but often about portfolios. Consequently, this paper examines the occurrence of IP litigation cases in Belgian firms using the 2013 Community Innovation Survey with supplemental information on IP litigation and patent portfolios. The rich survey information regarding firms’ general innovation strategies enables us to introduce market-related variables such as sales with new products as well as sales based mainly on imitation and incremental innovation. Our results indicate that when controlling for firms’ IP portfolio, the composition of turnover in terms of innovations and imitations has additional explanatory power regarding litigation propensities. Firms with a high turnover from innovations are more likely to become plaintiffs in court. Contrastingly, firms with a high turnover from incremental innovation and imitation are more likely to become defendants in court, and, moreover, are more likely to negotiate settlements outside of court.

The protection of partial designs

Dr Stanley Lai (LLB (University of Leicester), LLM (Cantab), PhD (Cantab)) is Senior Counsel and Head of the Intellectual Property practice at Allen & Gledhill LLP. He is also the Chairman of the Intellectual Property Office of Singapore and specializes in all forms of IP litigation and IT disputes. Partial designs are protected in Singapore. This article considers the general approach of this protection, the scope of the ‘must fit’/‘must match’ exclusions and the two-step approach adopted by the Singapore Court of Appeal in considering infringement of a partial design. In Australia partial designs are not protected. There is an ongoing debate between different interest groups on whether the legislation should be amended to provide such protection. In China, proposed amendments to the Patents Act may introduce patent protection for partial designs in the near future. Design protection for graphical user interfaces (GUIs) has strengthened in recent years and it is broader in scope in Singapore, compared to China. However, this protection in Singapore may remove a layer of artistic copyright protection in respect of GUIs. This may have an impact given the longer duration that is available for copyright protection.

New Evidence on Determinants of IP Litigation: A Market-Based Approach

We contribute to the economic literature on patent litigation by taking a new perspective. In the past, scholars mostly focused on specific litigation cases at the patent level and related technological characteristics to the event of litigation. However, observing IP disputes suggests that not only technological characteristics may trigger litigation suits, but also the market positions of firms, and that firms dispute not only about single patents but often about portfolios. Consequently, this paper examines the occurrence of IP litigation cases in Belgian firms using the 2013 Community Innovation Survey with supplemental information on IP litigation and patent portfolios. The rich survey information regarding firms' general innovation strategies enables us to introduce market-related variables such as sales with new products as well as sales based mainly on imitation and incremental innovation. Our results indicate that when controlling for firms' IP portfolio, the composition of turnover in terms of innovations and imitations has additional explanatory power regarding litigation propensities. Firms with a high turnover from innovations are more likely to become plaintiffs in court. Contrastingly, firms with a high turnover from incremental innovation and imitation are more likely to become defendants in court, and, moreover, are more likely to negotiate settlements outside of court.

Putting Right Holders in the Centre: Bolagsupplysningen and Ilsjan (C-194/16) - What Does it Mean for International Jurisdiction Over Transborder Intellectual Property Infringement Disputes?

This paper analyses what the decision in Bolagsupplysningen and Ilsjan (C-194/16) means for transborder intellectual property infringement disputes. In this case, the Court of Justice of the European Union extended “the centre of interests” basis of jurisdiction under Art. 7(2) of EU Regulation No 1215/2012 to legal persons claiming infringements of personality rights on the internet. The Court also held that actions for rectification and removal of content infringing personality rights may not be brought before the courts of a Member State where the content is accessible. This article concludes that the centre of interests basis of jurisdiction is generally not applicable to right holders claiming infringements of intellectual property rights and/or complementary tort claims, except arguably for claims for the infringement of moral rights and unfair competition claims where the act exclusively affects the interests of a specific competitor. Many questions remain with respect to the localisation of a victim’s centre of interests. In addition, the article concludes that the judgment in Bolagsupplysningen does not affect a right holder’s ability to obtain an injunction in the Member State in which content accessible on the internet infringes a forum IP right. Still, the centre of interests basis of jurisdiction has the potential to give right holders an advantage for claims of on-line infringements of moral rights and acts of unfair competition that exclusively affect them and it can be expected that authors and traders will take advantage of this opportunity when considering their IP litigation strategies.

Detention of ‘Non-Union Goods in Transit’ at the EU borders and the right to freedom of transit: a new battle between IP and international trade?

Hesham Abdelgawad is a Judge at the Egyptian State Council. He also gives practical legal seminars in several universities in Egypt. In addition, he holds three Master of Laws degrees (LL.Ms) from universities in the UK, USA and Egypt. This article addresses one of the problematic dilemmas of the nexus between intellectual property and international trade, namely determining the consistency of the recent developments in the EU trade mark Directive and Regulation in relation to goods in transit in one of the EU Member States with the right to freedom of transit foreseen in Article V of the GATT. One of the most intricate challenges for intellectual property lawmakers is the question of how to adopt laws that are consistent with principles governing international trade between countries. The new EU trade mark Reforms generate serious concerns as to their compatibility with GATT Article V, especially the provisions related to the seizure of goods placed under transit in the EU that are not destined for the EU internal market, known as ‘Non-Union goods’. This article brings valuable clarification to IP policy and law makers, to lawyers involved in international trade and IP litigation, as well as issues of border measures for the enforcement of IPRs, since it provides explanation and overview of the relevant CJEU case law and the academic debate related to the topic in question. The article also provides a useful source for academics interested in the interaction between IP and international trade.

Multiple defendants in IP litigation

... For the purpose of the present article two terms must be addressed and defined: The term ‘IP’ is the first. The IP rights covered here include four distinct categories. The first category is registered IP rights on national level, that is, a registered national trade mark, design, patent, utility model or plant variety right, irrespective of whether the right has been applied for via a centralized procedure such as the Madrid Protocol (for trade marks),6 the Hague Agreement (for designs),7 the European Patent Convention8 or the Patent Corporation Treaty (for patents)9 or on a Member State-by-Member State basis. The second category is unregistered IP rights on national level, that is, a copyright or an unregistered national trade mark or design right. The third category is registered IP rights at the European level—namely the European Union Trademark (EUTM),10 the Community Design (CD),11 the Community Plant Variety (CPV)12 and the future Unitary Patent (UP).13 Finally, the fourth category is unregistered IP rights on European, that is, level—the unregistered Community Design.14 Excluded are therefore, inter alia, personality rights, trade secrets and goodwill.

A Bridge Between Copyright and Patent Law: Towards a Modern-Day Reapplication of the Semiconductor Chip Protection Act

This paper analyzes the history of the Semiconductor Chip Protection Act (SCPA) 17 U.S.C. §§ 901-914 and inquires into why it is seldom used in IP litigation. Afterwards, this paper makes the argument that the SCPA should be used more in IP litigation, perhaps in tandem with patent litigation, and can be a viable form of protection for semiconductor microfabrication firms or integrated circuit companies engaged in cutting-edge designs.

Weathering the Murphy storm: domestic IP litigation and industrial consolidation as pragmatic responses to the Court of Justice's decision?

ABSTRACTThis article explores the impact of the 2011 Murphy preliminary ruling on the dynamics of the sports broadcasting market and focuses on the actions of Sky plc (formerly BSkyB), which owns the rights to broadcast live matches involving several major English Premier League clubs. It is suggested that through its merger, post-Murphy, with its German and Italian arms, BSkyB appeared to act, albeit in the background, to protect its position in the industry and gain a foothold in very lucrative and still partly untapped pan-European markets. The article also explores the recent IP litigation initiated by the Football Association Premier League (FAPL) in English and Scottish courts designed to rein in landlords and tenants seeking to rely on the free movement rights confirmed in the 2011 judgment. It asks to what extent these various strategies can be read as an attempt by rights holders to ‘limit the damage’ to the value of their investments in expensive media content caused by Murphy.

Unpacking Trade Secret Damages

This study is the first to conduct an in-depth empirical analysis of damages in trade secret cases in the U.S. From an original data set of cases in federal courts from 2000 to 2014, I assess the damages awarded on trade secret claims. In addition, a wide range of other variables are incorporated into the analysis, including those related to background court and jurisdiction information, the kinds of trade secrets at issue, background details about the parties, the related causes of action included with claims of trade secret misappropriation, and details about the damages awarded. Analysis of this data and the relationship between and among the variables yields insightful observations and answers fundamental questions about the patterns and the nature of damages in trade secret misappropriation cases. For instance, I find average trade secret damage awards comparable to those in patent cases and much larger than trademark cases, very positive overall outcomes for plaintiffs, and higher damages on business information than other types of trade secrets. The results make significant contributions in providing deeper context and understanding for trade secret litigation and IP litigation generally, especially now that we enter a new era of trade secret litigation in federal courts under the Defend Trade Secrets Act of 2016.

The impact of Technical Examination Officers on the Taiwan Intellectual Property Court

The creation of a specialized Intellectual Property Court has changed the practice of intellectual property litigation in Taiwan. Established in 2008, the two most revolutionary changes presented by the Intellectual Property Court are the bringing together of civil, criminal, and administrative claims, as well as the provision for assistance from Technical Examination Officers (TEO). This article focuses on the impact of the introduction of TEOs and offers an analysis of this impact through documentary and qualitative research findings, exploring the role of technical examination officers in the Taiwan IP Court. This article looks at the operation of similar mechanisms in other IP Courts in the world, such as Germany, Japan, and Korea. The article then goes on to give an introduction to the function of the technical examination officers in the court and highlights the issue of the technical verification report. Subsequently, the author categorizes the views of different players in the IP court relating to the role of technical examination officers, summarizing that the Court believes in the existence of impartial technical truth. In the conclusion, the author provides an analysis of the setting of technical examination officers in the IP Court and suggests that it indicates the technical enclosure effect in relation to IP litigation expertise.

IP Litigation in United States District Courts - 2015 Update

In a previous paper, IP Litigation in United States District Courts: 1994 to 2014, I undertook a broad-based empirical review of Intellectual Property litigation in U.S. federal district courts from 1994 to 2014. This brief update extends that data to include the year 2015. This update contains new data on: (1) the overall state of copyright, patent and trademark litigation, (2) copyright litigation and the John Doe phenomenon, (3) the continuation of the patent litigation explosion and (4) the geographic distribution of copyright, patent and trademark litigation. This Update is not intended as a stand-alone article, it should be read in conjunction with the previous paper.

Harmonizing Public and Private International Law: Implications of the Apple vs. Samsung IP Litigation

IP litigations over mobile digital devices are soaring in many jurisdictions. Based on the observation that the same or closely related infringement claims over the IP rights embedded in a single digital product have been raised in multiple jurisdictions, some literature and legislative proposals suggest that an international jurisdiction over such litigations are necessary. This article aims to explore practical roadmaps to establish public international “conflict of laws” that can serve administering IP dispute resolution among MNCs. The author will start by reviewing both public international laws on IPRs including the Paris Convention, PCT, the Geneva Convention, the TRIPs, and their private counterparts. Institutional aspects of the WTO and the WIPO administering such as public international IP laws will also be examined. Agreeing with the proposed idea of establishing ‘public’ private international IP laws, this article will propose a more practical roadmap to establish time and cost efficient IP dispute resolution mechanism: the IP5 Collaboration Model.

TPP Australian Section-by-Section Analysis of the Enforcement Provisions

This paper analyses the leaked 30 August 2013 text of the TPP IP Chapter from an Australian perspective, focusing on the enforcement provisions only. The goal is to assess the compatibility of provisions in the current draft with Australian law and Australia’s international obligations: including TRIPS and the Australia-US Free Trade Agreement (AUSFTA). The review has several key purposes: 1. To contribute careful analysis to the current debate on the TPPA IP proposals; 2. To offer input into the Australian processes considering the TPPA; 3. To demonstrate to an international audience the relationship between these provisions and TRIPS; and 4. To demonstrate the relationship between these provisions and existing US Free Trade Agreements like AUSFTA. A surprising number of the provisions go beyond AUSFTA.Reading the IP provisions of the TPP IP chapter leak dated August 2013 is a maddening, dispiriting process. The provisions are written like legislation, not treaty, suggesting a complete lack of good faith and trust on the part of the negotiating countries. There are subtle tweaks of language, the phrases included or not included from previous treaties; the subtle re-wordings that might give a treaty provision an entirely different meaning. Working out the scope of a country’s obligations if even half of this text becomes treaty is going to be extremely difficult. A range of big picture questions arise as to the relationship between any TPP IP chapter and other obligations to which countries may be subject, and I’m not at all convinced we know the answers. On a substantive level, much about the language of these provisions has changed since the US proposals dated February 2011. Some more extreme elements of the US proposals have been removed or watered down; some safeguards or qualifications have been inserted that preserve domestic flexibility or require consideration of user interests or civil liberties and fair process. Despite this, the chapter is still radically unbalanced. There are still far too few safeguards for defendants and third parties in the context of IP litigation. And there are many specific proposals with potentially negative impacts on the litigation process and on the balance of IP law.