Recent IP decisions reinforce the view that outside the US, IP decisions more often favor patent and trademark holders.
China: One on the patent side, one on the trademark
Before 1985, China had no patent system, and many people have been skeptical of what system there is since then. But China recognizes the importance of protecting IP rights, and has even created an IP court in Beijing.
A patent holder, Iwncomm, is the owner of a standards essential patent (SEP), which means that it holds a patent for a technology that is required by any mobile operator that uses one of the essential standards (like 3G, 4G LTE for example). In a recent holding, an IP court ordered Sony to pay Iwncomm $1.3 million in damages and stop selling certain mobile devices that infringe Iwncomm's patent.
Iwncomm's injunction applies not just to products sold in China but also to exports of goods made in that country. Erick Robinson, the director of patent litigation at Beijing East IP Ltd., summed up the holding's broader implications. “Enforcement of standard-essential patents is an important issue throughout the world, specifically whether injunctions should be available in such cases...In China, the answer to this question is a definitive ‘yes.’”
A trademark ruling in favor of Under Armour ordered a knock off clothing maker called Uncle Martian (!) to pay $300,000 in damages, destroy its products, and cease infringing manufacture. The interesting thing to note here is that this result issued from the People’s Higher Court of Fujian Province, which a local provincial court. This gives rise to a growing belief that IP owners may find support to enforce their IP rights in Chinese courts, even outside the specialty ones.
UK: Easier to find equivalence infringement
To find infringement, an accused product must fall within the scope of the patent claims. The infringement can be literal, meaning the claims literally read on the accused product, or equivalent, meaning the claims don't literally read on an accused product but the difference between the accused product and claims is insubstantial (this last word being the US test). In the UK, proof of equivalents, until recently, required that a patent owner overcome the Improver inquiry.
The variant will not infringe if any of the following are true:
- The variant has a material effect on the way the invention works.
- The fact that the variant has no material effect on the way the invention works would not have been obvious to an expert in the field.
- That an expert in the field would have taken from the language used in the patent that strict compliance with the primary meaning was an essential requirement of the invention.
The UK Supreme Court struck down this decision in Activis UK Ltd. v. Eli Lilly and Company. In an interesting decision that explores how other countries approach equivalents, the UK Supreme Court fount that "The second Improver question is more problematic. In my view, it imposes too high a burden on the patentee to ask whether it would have been obvious to the notional addressee that the variant would have no material effect on the way in which the invention works, given that it requires the addressee to figure out for himself whether the variant would work." In taking this position, the Court strengthened the perception that the EU in general and UK in particular, is a patent-holder friendly venue.
[A] patentee might wait for a decade or more while the infringer (who perhaps does not know or believe he is an infringer) invests heavily in the development of the infringing product (of which the patentee’s invention could be only a small component), while evidence that the infringer might use to, say, show the patent is invalid disappears with time. Then, if the product is a success, the patentee can bring his lawsuit, hoping to collect a significant recovery. And if business-related circumstances make it difficult or impossible for the infringer to abandon its use of the patented invention (i.e., if the infringer is “locked in”), then the patentee can keep bringing lawsuits, say, in year 10 (collecting damages from years 4 through 10), in year 16 (collecting damages from years 10 through 16), and in year 20 (collecting any remaining damages). The possibility of this type of outcome reveals a “gap.” Laches works to fill the gap by barring recovery when the patentee unreasonably and prejudicially delays suit.