1、专利池与公共利益专利池与公共利益Patent Pool and Public Interest 以以飞飞利浦利浦专专利无效案利无效案为视为视角角Taking Philips patent right invalidation case as an example张张 平平By Zhanping 北京大学法学院知识产权学院北京大学法学院知识产权学院Intellectual Property Institute of Beijing University Law School 20072007年年4 4月月18 18日日 April 18th,200718/04/2007Zhang Ping Pa
2、rt I The trend of Global Enterprises Patent Strategy Technology Patenting Patent Standardization Standard Globalization Market controlled by patent holder;Monoplied by a few large enterprisesDeficient of common parts and itsnegative influence on innovationMonoply priceLimit competitionMore co-existi
3、ng standardsare harmful to consumersProduct price increased as the result ofhigher operating cost of standard Problems18/04/2007Zhang Ping The birth and evolution of the patent pool Fierce fight over patent applications Sharp Increase of Patent Authorization Prominent Overlap between patent rights T
4、he complex dependent relationships between patent operation Substantial increase in operating cost of patents Formation of Patent Thicket “Explosion”of Patent Suits The industrial development is increasingly controlled by many decentralized and independent patent rights,which makes the patented tech
5、nology not be utilized fully and efficiently.Therefore,the patent pool is born.18/04/2007Zhang Ping The Concept of Patent Pool Patent Pool:a kind of patent association in its essence.It indicates that two or more patent holders give license to each other or the third party,granting one or more of th
6、eir patents upon consultation.In the typical patent pool,all patents included are open to all parties involved.To the third party outside the patent pool agreement,it usually provides the licensing contracts of standards.License fees obtained from patent pool is distributed to its members in accorda
7、nce with predetermined way.18/04/2007Zhang Ping Patent Pool&Technical Standards Setting up patent pool is often based on special technical standards:-Essential Patents Pool in DVB standard of Europe Union -Essential Patents Platform in 3G standard -Essential Patent Portfolio in MPEG-2 standard -3C a
8、nd 6C patent pooling in DVD standard18/04/2007Zhang Ping General problems during developing patent pool Evaluation procedure of necessary patent and material condition questioning:evaluation expert Uncertainty of patent disclosure:internal patent and external potential patent Unclear necessary paten
9、t:credibility of patent holder Bundled license:Suspicion of unnecessary patent tying Too many traps in the calculation of licensing fees:questioning its scientific content Unfair grant-back clause:exclusive grant-back in technical improvement non-questioning clauses of right:conceal invalid patent S
10、olutions to dispute jurisdiction:strong bargaining position Limit competition,hinder innovation,industrial development problem 18/04/2007Zhang Ping Part II Causes of Invalidating Philips Chinese Patent 1.Think about the problems that exist in the patent pool.2.Challenge the credibility of patent hol
11、der.3.Experience in researching good operation of IP system 4.Concerns about the mainland enterprises in the awareness and application of patent 5.Constructive considerations on national anti-trust legislation and industrial interest 6.Attempt to combine academic research of IP and social demand 18/
12、04/2007Zhang Ping Part II Causes of Invalidating Philips Chinese Patent1.Patent invalidation of City bank,which simmered in 20032.Argumentation of digital camera patent in 2003.Will digital camera follow in the footsteps of DVD?3.Global legitimation of DVD patent began in 2005.4.Subsequently,Dongjin
13、 case,Dongzheng case,Dongqiang case5.decide to take 3C patent as the contact point6.Invalidate Chinese patent CN95192413.3,i.e.Transmitting and receiving method of code data,and its transmitter and receiver.18/04/2007Zhang Ping Part II Causes of Invalidating Philips Chinese PatentGrounds to be defin
14、ed as request of nonprofit patent invalidation：First of all,it is hoped that this case can promote the national legal construction in the aspect of IP anti-trust through the analysis of limited competition and innovation hindrance in the patent pooling license.Intellectual property must be operated
15、under the regulation of Antitrust Law,which is the worldwide experience.However,there are still institutional drawbacks in the aspect of IP antitrust.Standard is public product,but intellectual property is private right.Standard containing Intellectual property is the public goods with impurities.Th
16、e government has to establish the corresponding system to prevent IP from being misused.18/04/2007Zhang Ping Part II Causes of Invalidating Philips Chinese Patent Secondly,mainland enterprises should be inspired of intellectual property protection and its application capabilities.As the patent syste
17、m itself cannot guarantee the purity of patent quality,and the foreign patent holder has strength and advantage in the aspect of law utilization and market expansion,a large number of“questionable patents”are seeking monopoly interest through the legal way.Presently,international parties involved ha
18、ve reviewed the impact that patent system has brought on innovation and competition,and begun to discuss the reform of patent system.The mainland enterprises should learn to use IP strategy to protect and develop themselves.18/04/2007Zhang Ping Part II Causes of Invalidating Philips Chinese Patent T
19、hirdly,advocating the combination of theoretical research of IP and development of national industry.In the constitution of technical standard patent pool and utilization of foreign patent pool,if it is involved with the research of foreign antitrust system and the way to learn and apply,only when y
20、ou have a thorough understanding of domestic practice can you decide the direction of academic research.18/04/2007Zhang Ping Single layerDual layerSingle layerDual layer18/04/2007Zhang Ping Patents overlap in different patent pool.In fact,hundreds of patents in a patent pool are only concerned with
21、scores of inventions.Patent family is basically same in technical features(Applied Internationally),but different in parts.Causes:Continue application,continue partial application,divisions or make amendments to adjust it to the patent law in different countries.18/04/2007Zhang Ping Philips carries
22、on joint license on behalf of 3C,the patents include(1)the patents belong to or possessed by 3C and their own affiliated company.(2)the patents before the date of filing or priority;(3)Necessary patents which conform to DVD standards,and the patent necessity is judged by American or European indepen
23、dent experts.In the Joint License Agreement,Philips grants licensee non-exclusive and non-transferable license.Licensee has right to manufacture licensed products in accordance with DVD standards in the designated area,and has right to sell the products to all over the world or treat these products
24、in the other 18/04/2007Zhang Ping Different licensed products are granted to different license agreement.Each kind of license agreement may be divided into three versions,that is,American,pacific-Asian,and other areas.The clauses of three versions are nearly identical;the main difference is the appl
25、icable law and jurisdiction.License fees are calculated by pieces rather than by percentage of sales price,and it is not subject to the fluctuation of market price of licensed products.License fees are not based on quantity of patents and dont change with the increase or decrease of patent quantity.
26、18/04/2007Zhang Ping Licensee pays 10000 dollars in advance,5000 of which is pre-payments of license fees.3.5%of sales price or five dollars is charged as license fees for each DVD player,which is sold before July 1st of 2000.The license fees are subject to higher one,Five dollars is charged as lice
27、nse fees for each DVD player,which is sold on or after July 1st of 2000.If the licensee fulfils the obligations of license agreement completely and submits eligible auditing report,each set may be charged 3.5 dollars as license fees.Within 10 years starting from the date of entry into force of the c
28、ontract,or the due date on which the last license patents expired in the areas permitted,subject to the first one.18/04/2007Zhang Ping The Law of Netherlands is applicable to the licensing agreement of Players in the Asia-Pacific regions and other areas.When Philips company is the defendant,only the
29、 courts in Hague of Netherlands have jurisdiction over such cases.The Law of New York State is applicable to the licensing agreement of Players in USA.When Philips Company is the defendant,only the courts in New York or Federal Courts have jurisdiction over such cases.Clauses of Applicable Law and J
30、urisdiction18/04/2007Zhang Ping 3C patent licensing agreement is subject to review of US Department of Justice Relevant regulations of American anti-trust law The first Article of Sherman Act:Every contract,combination in the form of trust or otherwise,or conspiracy,in restraint of trade or commerce
31、 among the several States,or with foreign nations,is declared to be illegal.Every person who shall make any contract or engage in any combination or conspiracy hereby declared to be illegal shall be deemed guilty of a felony,and,on conviction thereof,shall be punished by fine not exceeding$10,000,00
32、0 if a corporation,or,if any other person,$350,000,or by imprisonment not exceeding three years,or by both said punishments,in the discretion of the court.The second Article of Sherman Act:Every person who shall monopolize,or attempt to monopolize,or combine or conspire with any other person or pers
33、ons,to monopolize any part of the trade or commerce among the several States,or with foreign nations,shall be deemed guilty of a felony,and,on conviction thereof,shall be punished by fine not exceeding$10,000,000 if a corporation,or,if any other person,$350,000,or by imprisonment not exceeding three
34、 years,or by both said punishments,in the discretion of the court.Article 7 Sherman Act,Any person who suffered property damage because of antitrust issues,can bring up litigation to American Court in the defendants residence,or the place to be found or exist agency.Regardless of the size of damage,
35、give triple compensation equal to the damages and legal cost and reasonable attorney fees.18/04/2007Zhang Ping 3C patent licensing agreement is subject to review of US Department of JusticeIn 1998,US Department of Justice made review of 3C patent pool licensing agreement in accordance with the revie
36、w procedures of business activities.3C joint licensing arrangement is achieved through two licensing agreements.One is the other members of 3C signed licensing agreement with Philips,the other is Philips signed the licensing agreement with the manufacturers of DVD disc or player on behalf of 3C.Anti
37、trust review ideas:measuring the anticipated pro-competitive effects and the potential anti-competitive risks of joint patent license(or patent pools).The concrete analytic steps are as follows:identifying whether the patent pool is the combination of complementary patents or not.If so,continue to e
38、xamine whether the resulting effects outweigh the anti-competitive effects.Examination of 3C patent pool made by the Ministry of Justice,is premised on the fact that all of licensed patents are efficient patents.3C doesnt declare to give up efficiency hypothesis of any licensed patent in the informa
39、tion,which is submitted to the Ministry of Justice by 3C.if the Ministry of Justice received the information weakening the above-mentioned hypothesis,it would change its executive intent of 3C joint licensing arrangement.18/04/2007Zhang Ping 3C patent licensing agreement is subject to review of US D
40、epartment of Justice However,American Department of Justice finds that 3C joint licensing arrangement is lack of mechanism to eliminate invalid patents.The external experts engaged by Philips only examine the necessity of putting patent into the pool,not the patent validity.Besides,the allocation of
41、 license fees is not based on the number of inclusion patents,therefore,3C members are deficient of motives to challenge the other patents.Link:Review of 3C patent licensing policy by Department of Justice 18/04/2007Zhang Ping Part IV Patent Disputes of Philips in the World Litigation in USA In June
42、,2004,Wuxi Multimedia Co.,Ltd.(Hong Kong)accused 3C League of forcing his rivals to succumb to illegal license and charging agreement in the Santiago of United States District Court Southern district of California.It violates the Sherman Act and many other laws and regulations.In December of the sam
43、e year,Wuxi Orient Power Digital Sci-tech Co.,Ltd.the affiliated company of Hong Kong Orient Power Electronics Group,joined the litigation as the co-plaintiff and amended the bill of complaint,making collective complaint on behalf of manufacturer and vendors of DVD players.18/04/2007Zhang Ping Part
44、IV Patent Disputes of Philips in the World Litigation in Hong Kong On May 23th of 2005,Philips Company accused Hong Kong Orient Power Electronics Group and its thirteen affiliated companies of failing to report product quantity and pay CD DVD patent royalty of 60 million dollars,also charged it with
45、 conspiracy to bring Philips great loss and requested it to make compensation.Chinese party said,Philips company making accusation in Hong Kong is purposed to disturb American litigation.However,Philips asserted that there is not any connection between these two litigations.18/04/2007Zhang Ping Part
46、 IV Patent Disputes of Philips in the WorldLitigation in Germany Hong Kong Orient Power Electronics Group accused Philips of patent right invalidation at German Federal Patent Court,who made the judgment of first trial on June 15th of 2005.It held that Philips European patent No.EP0745307 is invalid
47、 in Germany.Philips lodged an appeal and the appeal court has made no judgment.In the first trial,OPEC(Orient Power Electronics Company)argued that European patent EP0745307 has no originality and submitted five comparative documents to the court,who adopted one of them,i.e.American patent US5208665
48、.European patent EP0745307contains fifteen claims altogether.Claim 1 to 6 are involved with a kind of transmitting way of code data;claim 7 to 12 is concerned with a receiving method of code data;claim 13 is about a kind of transmitter;claim 14 is regarding a sort of receiver and claim 15 is referre
49、d to a kind of image signal.18/04/2007Zhang Ping Part IV Patent Disputes of Philips in the World German court held that there are five technical features in the first independent claim,but four of them have been made public in the comparative document US5208665.Testimony by experts confirmed that th
50、e remaining technical feature is common sense for the public.Therefore,the first claim has no originality.Neither do independent claims 7,13,14 and 15,because they only contain the technical features of the object in the first English claims actually.For subordinate claims 2-6 and 8-12,the plaintiff
