Reflections on Recent Developments of Statutory Public Interests in Patent-based Section 337 Proceedings (English article)
After the recent amendments in 2011 and 2013 of the Rules of Practice and Procedure by the International Trade Commission (ITC), at least from the procedural perspective, complainants presently have been burdened with an increased cost of collecting adequate information concerning statutory public interests even before putting forward the complaint, in order to justify the desired remedy by virtue of indicating no harm to statutory public interest. This reflects the ITC’s aspiration to make the final determination more precise and equitably justified on the analysis of public interest issues, so as to ultimately protect relevant domestic industries in terms of curbing intellectual property infringements in imports simultaneously without unduly sacrificing certain statutory public interest. Although the actual effect of the amendments in the long run still remains to be seen, the amendments possibly will generate some desirable results: first, from the perspective of law and economics, they are conducive to decrease the possible related adverse impacts in terms of negative externalities and increase economic efficiency; second, the amendments are also favourable to curb the existing ‘patent troll’ suits, although they are currently still not severe, by means of adequate considerations concerning statutory public interests, so as to optimally achieve the ultimate legislative goal of Section 337 and third, it is evident that an interest-balanced approach, in terms of more in-depth analysis of public interest, is better than the traditional all-or-nothing approach to some extent. Accordingly, a more equitable adjudication in terms of a better interests balance can be attained by utilizing the interest-balanced approach.
Patent Holdup, the ITC, and the Public Interest
The Supreme Court's eBay decision requires district courts to weigh the equities before permanently enjoining a defendant. This is a good thing. Since eBay, the tactic of threatening injunctions to, in the Court’s words, “extract exorbitant fees” has declined. It's now harder for a patent assertion entity (PAE), or patent “troll," and in certain cases, operating companies, to win an injunction. But eBay’s discretionary test doesn’t apply at the ITC. This has had the unintended consequence of driving those who seek to circumvent eBay's ruling to the ITC, where the odds of getting an injunctions are better. In this paper, we document that trend, which is dramatic. Increasingly, cases filed at the ITC are filed by PAEs against an entire industry, often information technology. Practicing entities too have turned to the ITC to seek injunctions district courts won't give them, for example on patents covering industry standards. Because the ITC can’t award damages, it has granted injunctions as a matter of course. But as we suggest in this paper, the Commission has more power to adjust the remedy it grants than previously recognized. We think it should use that flexibility to limit exclusion orders when competitive conditions demand it. A PAE may not be any more justified to receive an exclusion order from the ITC under its public interest analysis than to receive an injunction from a district court applying eBay. Even practicing entities should be denied the power to exclude in some circumstances, for example when the patents are standards-essential and/or encumbered by a RAND license, there is no evidence of bad faith, and the patentee can seek damages in the district court. When exclusion orders are issued, delays in their implementation and grandfathering in existing products can reduce holdup. Bond and penalty provisions could be used to ensure that patentees are compensated for ongoing infringement during these transition periods. Using its discretion wisely, the ITC can administer the statute to fairly and efficiently give patentees their due while minimizing harm to the public interest.
Agriculture and Intellectual Property Rights: Economic, Institutional and Implementation Issues in Biotechnology
1: Introduction, V Santaniello et al. 2: Patent and Other Private Legal Rights for Biotechnology Inventions (Intellectual Property Rights - IPR), D D Evenson, P.L.L.C., Washington, USA 3: Intellectual Property Rights of Plant Varieties and of Biotechnology in the European Union, V Santaniello 4: Intellectual Property Rights under the Convention on Biological Diversity, W Lesser, Cornell University, USA 5: An Economic Approach to Identifying An `Effective Sui Generis System' for Plant Variety Protection Under TRIPS, W Lesser 6: Recent Intellectual Property Rights Controversies and Issues at the CGIAR, S H Bragdon, IPGRI, Rome, Italy 7: Economics of Intellectual Property Rights for Agricultural Technology, R E Evenson 8: The Market Value of Farmers' Rights, R Mendelsohn, Yale University, USA 9: International Crop Breeding in a World of Proprietary Technology, B D Wright, University of California, USA 10: Knowledge Management and the Economics of Agricultural Biotechnology, D Zilberman and C Yarkin, University of California, USA and A Heiman, Hebrew University, Israel 11: Comparing Allocation of Resources in Public and Private Research, S Lemarie, Universite Pierre-Mendes, Grenoble, France 12: Biotechnology Inventions: What Can We Learn From Patents?, D K N Johnson, Wellesley College, Massachusetts, USA and V Santaniello 13: Biotechnology Inventions: Patent Data Evidence, A Zohrabyan, Yale University, USA and R E Evenson 14: Property Rights and Regulations for Transgenic Crops in North America, G Carlson and M Marra, North Carolina State University, USA 15: Intellectual Property Rights, Canola and Public Research in Canada, P W B Phillips, University of Saskatchewan, Canada