International Ip Developments

• Citation: Vol. 40 No. 4
• Publication year: 2015
• Author: AURELIA J. SCHULTZ

International IP Developments

AURELIA J. SCHULTZ

PATENT CLARIFICATIONS AND RELATIONSHIP TO COMPETITION LAWS

Evidence in Australia Opposition Proceedings

A number of case decisions have resulted in clarification regarding patent laws in several countries. Merial Limited v. Bayer Intellectual Property GmbH clarified the evidentiary rules for opposition filings in Australia.¹ Australian opposition regulations introduced in 2013 have strict time-limits for a series of evidence and reply submissions.² The 2013 amendments also introduced a public policy provision that allows the Commissioner to consult documents relevant to the proceedings that have not been filed by the parties but are available in the Patent Office; provision 5.23.³ In Merial, the Delegate of the Commissioner of Patents hearing the case held that information considered under 5.23 must be considered for its likelihood to change the outcome of the opposition.⁴ Information that is not likely to change the outcome should not be considered as doing so would lead to delay in the case.⁵

Unjustified Suits Related to Patents Can Violate Anti-Competition Law in Brazil

In Brazil, the Brazilian Competition Authority (CADE) Reporting Commissioner held that abusing litigation rights is grounds for a patent holder to be found liable of violating anti-competition laws.⁶ Eli Lilly had proceedings pending with the Brazilian intellectual property office (Instituto National da Propriedade Industri-al—INPI) regarding issuance of a patent for a cancer-treating drug called Gemzar. The application began as a process patent application. Eli Lilly attempted to amend the application in a manner that would have changed it to a product patent application.⁷ INPI refused to consider these additions.⁸ While Eli Lilly and INPI were still involved in debating the patentability of the process in the application, Eli Lilly brought suit against the National Health Surveillance Agency (AN-VISA) in an attempt to obtain exclusive marketing rights.⁹ Exclusive marketing rights are only granted in Brazil for product patents, not process patents.¹⁰ Eli Lilly was granted a preliminary injunction on appeal. Because Eli Lilly knew its pending patent application was for a process and not a product, the CADE Commissioner held that the suit against ANVISA was sham litigation and Eli Lilly's behavior in pursuing the suit amounted to anti-completive behavior.¹¹

China Requires Considering Ownership of IP Rights in Anti-Monopoly Proceedings

China has also been addressing the relationship between abuse of IP rights and anti-competitive behavior. The new Regulation on the Prohibition of Conduct Eliminating or Restricting Competition by Abusing Intellectual Property Rights came into force on August 1, 2015.¹² The law points out that anti-monopoly laws and intellectual property laws have the same goal: promotion of innovation.¹³ Factors considered when determining whether IP ownership is being abused include whether there are reasonable alternatives to the IP and refusals to license the IP.¹⁴ The law specifically mentions that patent pools cannot be used for the purpose of restricting competition.¹⁵ Penalties for abusing IP rights in a monopolistic way include fines, injunctions against behavior and confiscation of illegally earned income.¹⁶

UK Law Commission Releases Recommendations for Dealing with Unjustified Infringement Suits

On a related note, the Law Commission for England and Wales released a report suggesting legal reform to prevent unjustified threats to sue for patent infringement.¹⁷ The suggested bill included in the report addresses the issue by allowing the threatened party to sue for a declaratory judgement that the threat is unjustified, an injunction against continuance of the threat, or damages for losses sustained because of the threat.¹⁸ The report also covers unjustified threats for trademark and design rights infringement.

TRADEMARK UPDATES

Madrid System Expansion

Tunisia, which joined the Madrid Protocol in 2011, now has provisions in place governing the process for trademark owners registering their marks in Tunisia via the Madrid System.¹⁹ The new trademark law, Decree No. 2015-303 replaces Decree No. 2001-1603.²⁰ The new law also provides for electronic filing²¹ and procedures for opposing applicant marks.²² Companies doing business in North Africa can now use Madrid to register almost across the entire region.²³ Algeria announced its accession in July of 2015, with a planned in-force date of October 31, 2015.²⁴ West African neighbor, The Gambia, has also acceded to the Madrid Protocol.²⁵ Entry into force for...