Technology & Law

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THE EXTRA-TERRITORIAL REACH OF (SE)PATENTS? THE CASE AGAINST SEP PORTFOLIO LICENSING

One of the first things that law students are taught is that among the various rights granted by a sovereign, patents too are territorial in nature.  Simply put, patents granted by India are valid in India, and not valid in United States (US) or Pakistan, etc. and vice versa.Existing scholarship including case law in the US, focuses on the outbound impact of intellectual property rights (IPR), with patent laws being the focus of attention.  See, for example, US 35 USC § 271, and the related case law.  These studies have focused on  expansion and reach of high technology in foreign shores, and consequent violation of US IPR laws where the solution is to apply national IP laws on a ... Continue reading

CHINA RULES ON ADJUSTED ROYALTY BASE FOR SEP LICENSING

First posted on spicyip.com on 29.03.2015 Earlier this month the Chinese Anti-trust authority (NDRC) gave its decision in the Qualcomm matter involving Chinese Anti-Monopoly Law (AML).  This decision is a landmark decision where Qualcomm was found to have engaged in anti-competitive conduct relating to the licensing of standard essential patents (“SEPs”) for wireless communication technology and baseband chip sales.  The original decision is available here.  While a summary of the decision (based on Google translate) is also provided in this post, I have put in my comments in italics and I compare the approach taken by Indian courts / competition commission and the Chinese NDRC.  Image... Continue reading

LIMITING ROYALTIES FOR SEPS TO ‘CLAIMED’ INVENTION

First posted on spicyip.com on 18.01.2015 In a decision issued by the US Federal Circuit that will have major repercussion on the evaluation models for standard essential patents (SEPs), the  court gave substantial guidelines for determining an appropriate royalty base on which a royalty figure may be applied. In VirnetX, Inc. v. Cisco Systems, Inc. (No. 2013-1489), the appeals court held that the district court had wrongly instructed the jury that in determining the royalty base for calculating damages, it should not use the value of the entire accused product unless “the product in question constitutes the smallest saleable unit containing the patented feature.” This logic can be... Continue reading