主讲人：德国罗德律师事务所上海代表处知识产权和IT部门的负责人、该所初级合伙人Dr.Oliver Maaz

 

 

时间：7月23日上午

地点：中南财经政法大学文泓楼报告厅

 

 

In today's lecture, we'll go on to introduce Industrial Property Law, insight of my own experience of infringement practice In China and Germany, EU perspective and then a one-hour discussion on principle of exhaustion of intellectual property rights.

 

We start from a broad overview of the relevant German laws and regulations on industrial property. There are,

Patent Law;

Ordinance on Patent Procedures before the GTMPO(German Trade mark and Patent Office);

Ordinance on the deposit of biological material in patent and utility model procedures;

Utility Model Law;

Utility Model Ordinance;

Designs Law;

and Designs Ordinance.

 

From an international perspective review, the relevant laws and treaties include:

Patent Cooperation Treaty, under which international registration of patent is available. In this way, a universal priority date will be obtained, but it's not an international patent;

The European patent convention is the most important one in Germany. It's possible to get a bundle of patent protection under only one single application in EU patent organization, the patent office. Then it's no longer needed to apply according to different national laws. The European Patent Convention is different from the treaty. It grants the so-called European patent, not the 'EU patent' which does not exist.

Directive 2004/48/EC on the Enforcement of Intellectual Property Rights, which is a very important directive. It includes solutions for the intellectual property rights holders on  how to calculate damages;

Agreement on TRIPS; revised Berne convention. The key point is that the agreement under WTO must be abode by the countries because they're member states of WTO.

Paris Convention for the Protection of Industrial Property.

 

You're experts of IP law, so we are not entering to the details of laws. :-) We just have an overview through the following table.

 

Which is patentable and which is not? The exclusions are similar in German laws and Chinese ones.

The following are excluded in Patent Law:

discoveries, scientific theories or maths methods;

aesthetic creations(protected by copyright);

schemes, rules and methods for performing mental acts, for playing games or for doing business. The computer software/program in general are excluded from the patent in Germany, but if it contains technological teaching, it might be OK.

presentations of information;

construction and processes which are contrary to the laws of nature.

Furthermore, patents cannot be granted in respect of:

the human body at various stages of its formation and development; (~the discussion on the personal rights of embryo)

inventions of which industrial exploitation would be contrary to ordre public of morality.

 

Patentable Inventions according to European Patent Convention Arc. 52

(Please consult the slides or EPC.)

 

In the Western community, CII means computer-implemented inventions. Does it have the availability of patents by the EPO?

Patent practice in EU is different. And the developers need to show that their invention actually made a contribution in a technical field to obtain software patents.

Availability of CII patent by GPTMO?

It also requires a technical character by referring to a decision of Federal Court of Justice.

The case of 'antiskid system'(ABS): A brake of car is not new. ABS's computer program cannot be a patent because it's excluded. But if they mixed, then the 'system' get a new technical character which makes the mixture patentable.

 

 

 

Next part, the infringement practice, is interesting for me as a lawyer, and must be interesting for you as well.

Let's assume a Chinese company has a subsidiary in Germany, providing exhibition service. For example it builds and provides stands for trade fairs. Its business runs very well. The Chinese general manager saw an infringement that its German supplier built and sold the same type of stands. Assuming the Chinese company holds patents, what should they do next to stop the infringement. German laws applied here, but it's OK to discuss the principle only.

Colleague's answer: negotiation first.

 

Good solution. But the injunctive relief (preliminary injunction) can also be the first step. For some case, it can achieve certain decision before the court. The court only check the application. A preliminary injunction applies in urgent cases, preventing the long time to wait for hearing in the court procedure.

To receive the benefit from the  preliminary injunction, one must collect enough evident in a short time (usually 1 month) and convince the court the situation is an urgency.

But the preliminary injunction is hard to get (the same in China). The judge has to consider and review. It also does not include damages or lost profits because the judge can not decide damage based on insufficient evidence.

 

Why do you need information? Do you have rights to claim? More infringement?

In some rough industries, people do not often talk or answer questions. A claim for information is combined in the application of preliminary injunction to the court, and assessed in very quick court procedure. But not easy to apply in Germany, EU and China.

 

The rendering account refers to the right to request infringer's financial data. If you want to claim your damages from the infringement., it is not easy to calculate the damages and loss and then convince the court, unless you ask the infringer to give you the balance sheet to see the profits of infringement. How to calculate the damage? It includes the lost profits of IPR holder, the license fee and infringer's profits.

 

With evidence of infringement, most case could get a decision. The infringer has to stand everything, including the destruction. It applies in Germany and EU very well.

 

Another way is to send a Cease-and-desist letter directly instead of negotiation. The cease-and-desist letter issued by a lawyer is very serious and costs a very high lawyer fee (covered by the infringer if reasonable), but it worth. Nowadays, it's widely used in 23 EU countries. It includes the declaration of penalty clause stating a certain amount. The sender obviously want the infringer to sign the declaration, stop infringement immediately and promise not to involve in infringement again in the future. Otherwise, the infringer should pay to the IPR holder as stated in the 'contract'. If the infringer does not pay, then the IPR holder could go to court dealing with the contract, not preliminary injunction or intellectual property rights.

I have tried to use cease-and-desist letter in China several times, but there's even no feedback. The  Chinese companies do not care, because they're not aware of the cease-and-desist letter, but they will.

 

Eg. Shi Nan is in Germany and receive a cease-and-desist letter. But she thinks there's no infringement of her. In other words, she's innocent, what will she do? In the case, the letter issuer will definitely go to the court if Shi Nan does not sign.

Comment: it depends on industries, people do not talk to each other in the rough industry. Shi Nan can send back a counter cease-and-desist letter. But most of the time people talk to each other.

 

For the Interim Injunction, decision can be obtained very fast, without hearing. It's only based on clear circumstances.

 

You should always assume the plaintiff go to court, so prepare the evidence and try to inform the court saying I'm not a infringer. To prevent to interim injunction, one should use the Preemptive letter.

 

Which court should you go to? In many cases, especially the violation cases spread on Internet, the plaintiff sue in any court he or she prefer, that's the flying jurisdictions. To solve the following problem, a centralized organization was set up to let all the court know the 'letter' coming. However, the court can, but not have to check the letters. Currently this organization exist, but it's not established. We don't know what's going on in next ten years.

 

In the end, let's go back to the case of Chinese company. The Chinese company obtains a decision from the court, that's only a preliminary stage. After decision satisfied your need, you must go to court again in the main procedure. So it is made up of two steps. An alternative is to send a Final letter to the infringer ask him to clarify something. It's cost saving, time saving and can be ended very fast.

 

The laws in 23 nations are mainly influenced by EU directives. A directive requires member states to achieve a particular result without dictating the means of achieving that result. EU regulations must be distinguished which are self-executing and do not require any implementing measures. Just abide. The idea of EU directives and EU commission. EU directives need to be implemented correctly by the member states by means of modifying their national law ('transposition'). The intellectual property rights entered EU directives in recent years.

 

The European Commission may initiate legal action against the member state in the European Court of Justice, if a member state fails to pass the require national legislation; if the national legislation does not adequately comply with the requirements of the directive; or when a member has a transposed a directive in theory but has failed to abide by its provisions in practice. If a member state lose the case, she should pay the  loss and be fined. 1298 cases have opened before the court on 2008-05-01.

Germany as a EU member state need to understand the directives, and to solve following problems by harmonizing national law based on directives. But the procedure takes a long time. The time period could be easily limited by EU in the files, about 2 years. For the IPR directive in 2004, the German domestic legal environment was not prepared well at that time. Germany need to adopt legal principle in the national law and balance between the consumers and companies as well. The result is that Germany fail to implement in 2 years.

 

Although in different legal backgrounds, China may consider this idea as a way to harmonize her national law, solving problems in the comparable relationship between Beijing and the provinces.

 

Discussion: Scope of Application of the Principle of Exhaustion in online transmission.

There is no right answer or right solution, we just discuss and brainstorm.

 

A student purchase a book to study, and sell it to another student after use. It's OK because the right of distribution of the author has exhausted.

The Article 17 Copyright Law only talks about distribution right.

The exhaustion principle involves the balance of the interest of the right holder in controlling distribution of his work within the exclusive rights granted to him by copyright, and the interest of the public in free circulation of copies of the work.

 

Rational of the Principle of Exhaustion:

distinction of the rights in the immaterial work and the transfer of material copies of the work which are traded as goods. This forms an exception to the exclusive control with respect to these material incorporations of the immaterial good and seeks to safeguard free circulation and marketability of physical copies;

transfer of property;

remuneration theory which regard the first sale as sufficient to compensate the author.

 

The problem:

A (first) licensee acquires software online from website of the producer. The producer grants the licensee a non-exclusive, non-transferable license. The first licensee may for different reason not have a need for the license any more, e.g., bankruptcy. He then 'sells' the license to a mediating company which sells them a second licensee, all without the consent of the right holder. The second licensee does not get a physical carrier from the first, but downloads the software from the producer's website, or is already using a copy of the software.

 

Software producers like Microsoft have excluded the reselling of their software without their consent in their licensing agreements. The requirement of consent to the transfer of a license by the licensee is based on existing copyright law. However there is an emerging business model of buying software from licensees and reselling it to a second licensees without permission of the right owner. Nevertheless licensee can resell the license by agent, Microsoft can do nothing. ('second hand software')

 

Legal situation:

Distinction of goods and services in European directives.

The second assumption in European copyright is that online distribution is to be regarded as a service. Then the principle of exhaustion does not apply. A contract of purchasing software has so many element as service, not easily as same as purchase of goods.

Europe considers the absence of a transfer of a physical copy in online transmissions;

Europe recognizes the connotation of a physical copy with the sale of goods.

For this reason the European Commission probably think of digital transmission as generally constituting services in European law.

 

But is it fair?

The business model is new, however, the agent problem is not a new one. There exist different opinions in northern/southern part of Germany. EU's attitude is that everything of online transmission is service. But we cannot simply say so, we need to distinguish.

Is the assumption correct that online transmission always involves a service? Is there online delivery of digital goods involved, i.e. can online transmission of computer programmes be deemed as a contract for sale?

 

A key question is that how to balance the interest between the author's right to distribute and the public to have freely flow. No perfect final solution until now, it's being discussed in Germany. Scholars are making theory. Software producers are doing their business. Anyway we should not give up the legal principle. A German professor in the field of information law disclose his theses. (Please consult the slides.)

 

 

（文字整理：孙亿）

编辑：凡咏齐