The Journal of World Intellectual Property

Publisher:: Wiley
Publication date:: 2021-02-01

ISBN:: 1422-2213

Issue Number

No. 26-3, November 2023

Latest documents

Role of open innovation and patents on strategic decision making
The fourth industrial revolution, as it is popularly known, is transforming the overall ecosystem of business and is swiftly affecting the structure of organizations with respect to their working strategy. It is leading to enhanced collaboration and cross‐application of center‐specific fundamentals across various industries. As a result, collaboration and cross‐licensing of technologies have become the norm rather than an exception. Open innovation, therefore, plays a critical role in various horizontal applications of industry‐specific concepts. As a result, choices such as “keep or sell” or “make or buy” research and development (R&D) supplies have become extremely critical and significant. Therefore, patent‐based research is required as an enabling tool for assisting research on an open innovation‐based approach. This article projects an in‐depth review of the research articles related to various aspects of open innovation and patents and their overall impact on firm performance. This article also suggests an open innovation model that cumulates the role of patents and institutional participation with a focus on firm performance. The impact of open innovation on firm performance is evaluated with respect to variables on market positioning, R&D capacity building with respect to technology lifecycle, the impact of intellectual property, for instance, the existence of valid patents and know‐how, and the process of acquisition of technologies by such organizations.
Geographical indications and traditional cultural expressions: A comparative legal analysis of the GI laws of Indonesia and India and a case study analysis
Many of the geographical indications (GI) in developing countries are intellectual creations with incredible uniqueness generated by traditional communities and local people. These products are linked to the culture of that community and hence can be considered as traditional cultural expressions (TCE). Dev gangjee and Steven Van Uytsel and argued that TCE can be protected under the law of GI. Moreover, there are many similarities between GI and TCEs. These two forms share some unique characteristics that other intellectual property systems are not indulged in as well as not in concern with of many nations. Handicrafts, textile products, pottery works, jewellery works are some prime examples of TCEs protected under the law of GI in India and Indonesia. This article intends to validate the compatibility of GI laws in providing space for TCEs and give some suggestions for enhanced compatibility. Case study approach has been used as methodology and that the study presumes that the present GI laws in India and Indonesia are not capable of adequately protecting TCE.
Who judges plants? Scientific‐legal judgement of varieties for plant breeder's rights
An internationally standardised system of intellectual property protection for new varieties of plants is outlined by the Union for the Protection of New Varieties of Plants Convention. Within this system, member States must determine who will be responsible for assessing plant varieties. Jurisdictions have adopted divergent approaches to this question, with varying degrees and modes of government involvement in the assessment process. Taking Australia as a case study, this article explores a decentralised system of expert judgement where individuals accredited as Qualified Persons are authorised to judge new plant varieties. Drawing on extensive interviews, this article outlines Australia's Qualified Person system, including the accreditation, training, and supervision of Qualified Persons. I argue that the formal system of varietal assessment is underlaid and buttressed by a multiplicity of informal elements, including the tacit knowledge of Qualified Persons, audit processes, apprenticeship‐like learning practices and interpersonal relationships of trust between Qualified Persons and government officials.
Antisuit injunctions in SEP disputes and the recent EU's WTO/TRIPS case against China
The existence of standard essential patents (SEPs)—and the associated litigation—has potentially disruptive consequences for the manufacture, marketing and distribution of complex products that incorporate many patented standards, for example, information and communication technology (ICT) products such as smartphones that incorporate a camera, video, web browser, wireless communications, text messaging, and so on, as well as an increasing number of ‘connected’ Internet of Things products such as wearable devices and ‘smart home’ devices. Indeed, SEP owners may use the patent enforcement system to prevent implementers of these technologies from bringing to market competing products that use the same standards. As is known, this raises concerns about competition in the market and the need to maintain interoperability to ensure the development of the ICT industry. One of the legal tools which can be used by implementers to (try to) neutralise SEP holders' anticompetitive behaviours is the ‘antisuit injunction’ (ASI). ASIs are not uncommon in common law jurisdictions while they are foreign to civil law countries within the European Union (EU). ASIs are particularly useful to SEP implementers when patent holders disrespect their commitment to license their patents on a FRAND basis. For example, a judge who is in the process of assessing whether the SEP owner complies with FRAND terms may at the same time grant an ASI to stop the patentee taking patent infringement actions in other jurisdictions until the FRAND litigation has been concluded. In February 2022, the EU filed a complaint at the World Trade Organization (WTO), arguing that China's use of ASIs prevents EU‐based companies from properly protecting their SEPs. Indeed, ASIs have recently been granted in several Chinese disputes, including in Huawei v Conversant and Xiaomi v. InterDigital. More specifically, China's Supreme People's Court held that Chinese courts can use ASIs to prevent SEP owners from filing disputes in any foreign courts to enforce their patents; and that anyone who does not comply with the injunction should be fined €130,000 per day. In the WTO case the EU notes that such a case law jeopardises innovation and growth in Europe, ‘effectively depriving European technology companies of the possibility to exercise and enforce the rights that give them a technological edge’. From a legal perspective, according to the EU, China's conduct is in violation of various Trade‐Related Aspects of Intellectual Property Rights (TRIPS) provisions, including Article 28 which grants exclusive rights to patent owners. The paper focuses on this EU–China WTO/TRIPS dispute and more generally, on the relevance of ASIs within SEP cases.
The EU regulatory data protection in the agrochemical industry: Towards a data sharing model in favour of sustainable market play and a sustainable environment
Regulatory data protection is mandated in the Agreement on the Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement) for two kinds of goods: medicinal products and plant protection products (PPP). In the European Union (EU), the level of their protection has been set far beyond the minimum TRIPS standards and the adopted model of protection has been, for the most part, based on temporary exclusivity. Innovative plant protection products benefit from data exclusivity combined with a compulsory data sharing regime. Data exclusivity refers to products being authorised for the first time for the market of the EU on the grounds of a complete authorisation procedure, based on submission of a full data dossier. Within the period of exclusivity, these data may not be referred to in the authorisation procedure of a generic product—an equivalent to the reference one. In this way, data exclusivity creates a period of factual monopoly for the innovative products and constitutes a sui generis intellectual property right. This paper presents the regime of regulatory data protection in the European Union law as an instrument of legal protection for innovative products in the agrochemical industry. It first analyzes the purpose and functions of regulatory data protection in EU law and in the TRIPS Agreement. Then, the rules of protection by means of data exclusivity and compulsory data sharing are examined. This allows for further considerations on the role of regulatory data protection and compulsory sharing of data in the overall legal protection for innovative products in the agrochemical industry. In view of the above, this chapter discusses both the instruments of protection for PPP regulatory data and poses several questions concerning their rules, practical meaning and possible future modifications. In particular, it is considered whether data exclusivity is the optimal regime of protection for registration data and recommend that a data sharing approach could be used instead of the data exclusivity rule, as is the case with compulsory vertebrate data sharing, to the benefit of the industry and public interest. This chapter allows for evaluation and assessment of the economic and social value of data exclusivity in said areas for fostering primary and secondary innovation, while acknowledging other vital interests such as protection of public interest and safeguarding competition in the relevant markets. Finally, this chapter maps challenges of the current model of protection and indicates areas for further consideration in both creating a coherent and balanced framework of PPP data protection and the possible extrapolation of the data sharing rules to systems of data protection for other life science products.
Communities as inventors: Rethinking positive protection of traditional knowledge through patents
Traditional knowledge of indigenous communities often overlaps with spiritual traditions in which certain biogenetic resources are understood to be “sacred”. Accordingly, one of the key concerns of these communities is to retain control over the manner in which the knowledge is used so as to ensure that its sanctity is preserved. While much of the literature on the protection of traditional knowledge revolves around defensive protection, some commentators have argued for positive protection using patent law by recognizing the entire community as inventors and vesting property rights in perpetuity with the community as a whole. This paper observes that such positive protection through patents is consistent with the TRIPS Agreement and is likely to be successful in combating biopiracy but suffers from one crucial flaw—even if the community owns patent rights over a biogenetic resource, the community has no means to ensure that a potential licensee of the patent would adhere to the religious protocols of the community. Accordingly, it argues for the incorporation of collective moral rights rooted in indigenous law into the legal framework governing the licensing of traditional knowledge patent with a view to ensuring that indigenous communities can preserve their cultural heritage even after such community patents are licensed.
The author's moral right of withdrawal and its reasonable restriction or contractual waive
Copyright protects original works of authorship by granting the author economic rights, which give the author an exclusive right of economic exploitation, and moral rights, which protect noneconomic interests of the author. Moral rights are not considered property, but an aspect of the author's personality. The aim of this study is to find a solution how to include one of the author's moral rights—the right of withdrawal—in the national legal acts, so that it meets the interests of both the author himself and the user of the work. The research question is: how much should it be necessary to limit the right of withdrawal so that neither the transferee of the economic rights nor other coauthors of the work suffer from its excessive use? To find an answer to the research question, international and national legal norms of various countries were studied, the materials of international conferences were analyzed, as well as the information available on the Internet about the origin, use, and development of moral rights were taken into account. There is a wide diversity of opinion on the application of right of withdrawal, as well as great differences in the laws of individual countries. Although the laws of Common Law countries include mandatory moral rights (according to the Berne Convention), the right of withdrawal in its classical form is not provided for in any of the analyzed countries. In Civil Law countries are different attitudes to withdrawal rights. Some Civil Law countries have and some have not included these rights in national copyright law. The right of withdrawal can be included in the catalog of moral rights of national copyright laws, but it cannot be an unlimited right. Certain limitations or exceptions must be established for specific types of work or specific situations of use. It should also be possible for the author to contractually transfer or waive certain moral rights in specific situations.
Copyright Law Protection of films in Nigeria (Nollywood) and South Africa (Sollywood): Pre and post‐Covid‐19 pandemic
The Covid‐19 pandemic inflicted socioeconomic harm on an unprecedented scale. Across the world and to varying degrees, cinemas were closed, festivals were cancelled or postponed, and film releases were moved to future dates or delayed indefinitely. In 2020 the entire global theatrical and home/mobile entertainment market totalled $80.8 billion, the lowest figure since 2016 and a decline of 18% from 2019. Theatrical entertainment accounted for only 15% of the total global entertainment revenue, compared to 43% in 2019. While some has been written about the effects of Covid‐19 on both international and local film industries, this article seeks to provide an African perspective focusing on the realities in Nigeria and South Africa, respectively. This article examines the importance of filmmaking industries in Nigeria and South Africa as well as the difficulties faced during the Covid‐19 pandemic. Copyright laws in both terrains are critically reviewed based on the capacity of these laws to protect the interests of film industries pre and post‐Covid‐19.
Patents and sustainable innovation in Indian Startups
Patents help in protecting research and development efforts in an organisation. They are known to increase valuation during merger and acquisition and act as signal for investors to make investment decisions in startups. Despite the value that patents add to a firm, vast majority of patents remain unutilised across organisations. Environmental, social, and governance (ESG) investing is gaining popularity and investors are increasingly using ESG analysis to make investments. In this paper, we study patents filed by Indian startups which pertain to one or more ESG factors, that is, environmental, social, and governance factors. The startups selected were externally funded startups. We believe that startups having patents pertaining to ESG factors will foster sustainable innovation, responsible investments, and better patent utilisation in startups.
Licensing standard‐essential patents in artificial intelligence‐based apps: A theory on dynamic royalty pricing mechanism
Standard‐essential patents (SEPs) are patents that are deemed essential to a specific technology standard, such as those used in wireless communication technologies. With the increased use of artificial intelligence (AI) and machine learning in a variety of applications, there is a greater demand for SEPs in the field of AI‐based apps. However, licencing SEPs can be a complicated process, and there is no agreement on best practises for SEP licencing in AI‐based apps. The adoption of a multifactor approach for determining FRAND royalty rates, the use of ex ante licencing to prevent patent hold‐up, and the establishment of specialized dispute resolution mechanisms for SEP disputes are some of the proposed best practices for SEP licencing in AI‐based apps. As potential solutions to the challenges associated with determining FRAND royalty rates in AI‐based apps, this study proposed alternative royalty schemes, such as the use of a per‐unit royalty rate or a revenue‐sharing scheme.