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Deceptive Conducts before the Patent Office / PART II: THE IMPROPER ACQUISITION OF PATENTS AS A COMPETITION LAW PROBLEM
Deceptive Conducts before the Patent Office / PART II: THE IMPROPER ACQUISITION OF PATENTS AS A COMPETITION LAW PROBLEM
Contents
Chapter
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1–24
Titelei/Inhaltsverzeichnis
1–24
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25–30
Chapter I: Introduction
25–30
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1. The Underlying Problem
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2. Deceptive Behaviour in Patent Procedures and Available Remedies under Patent Law
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3. The Patenting Procedure under the Spotlight of Competition Law. Yet another Angle for the IP v Competition Law Debate
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4. Scope and Structure of this Work
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31–116
PART I: GENERAL RULES ON THE PATENTING PROCEDURE
31–116
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Chapter II: The Procedure before the Patent Office
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1. General Framework
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2. Synopsis of the Patent Procedure in the USPTO and the EPO
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A. Examination Process: an Ex Parte Procedure
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B. Filing of a Patent Application. Description, Claims and Priority
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I. Description
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II. Claims
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III. Other Formal Requirements. Inventors and Priority
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C. The Application Process
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I. Formal and Substantive Examination, Publication and Office Actions
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II. Amendments
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III. Divisional Applications and Unity of Invention
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IV. Grant, Publication and National Validation
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V. Third Party Observations
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D. Post Grant Procedures
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I. Post-Grant Amendments, Ex Parte Reexamination and Supplemental Examination
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II. Third Party Intervention after Grant. Oppositions, Post-Grant Reviews and Inter-Partes Reviews
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III. SPCs and Term Extensions
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a. SPCs in the EU
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b. Patent Term Extensions in the US
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IV. Patent Linkage and the Orange Book
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E. Alternative Procedures. PCT, Patent Prosecution Highway and the Use of Results from other Patent Offices
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F. The Role of Patent Agents
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Chapter III: The Responsibilities of the Patent Applicants before the Patent Office
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1. The Duties of the Patent Applicant under US Law
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A. The Origin of the Inequitable Conduct Doctrine. A Stroll down Memory Lane
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B. The Development of the Inequitable Conduct Doctrine and the Duty of Candour
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C. Standards for Finding Inequitable Conduct
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I. Intent
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II. Materiality
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III. Burden of Proof and the ‘Sliding Scale’
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D. Types of Conducts that can be Held Inequitable
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I. Failure to Disclose the Prior Public Use of an Invention
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II. Failure to Cite Known Relevant Prior Art
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III. Submission of False Information
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IV. Other conducts
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E. Disciplinary and Criminal Sanctions
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2. The Duties of the Patent Applicant in Europe
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A. Extent of Patent Applicants’ Duties. Is there a Duty of Disclosure under the EPC?
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I. Rule 42(1)(b) EPC as a Duty of Disclosure?
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II. The Duty of Disclosure in the Travaux Préparatoires
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III. Rule 141 EPC and the Limited Duty of Disclosure
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IV. The impact of AstraZeneca
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B. Legal Consequences of a Deceitful Conduct before the Patent Office
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I. Germany
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II. United Kingdom
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III. Disciplinary and Criminal Sanctions
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3. Ruminations on the US Experience. What can European Courts and Legislators Learn from it?
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A. Extent of Patent Applicants’ Duties
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I. Defining the Scope of the Obligation
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II. Practical Value
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III. Interest of Applicants Themselves to have All Prior Art Considered
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IV. Duty of Advocacy
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B. Legal Consequences of a Deceitful Conduct before the Patent Office
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I. Evaluation of the inequitable conduct doctrine in the US
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II. Would it be advisable for European courts to implement a similar doctrine?
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117–298
PART II: THE IMPROPER ACQUISITION OF PATENTS AS A COMPETITION LAW PROBLEM
117–298
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Chapter IV: Competition and Competition Law Tools
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1. Goals of Competition Law
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2. Legal Framework in the EU and in the US
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A. Essential Pillars of the Competition Legal Framework
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B. § 2 Sherman Act and Article 102 TFEU. Scope and Objectives
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I. The First Element: Market Power
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a. Market Definition
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i. Product and Geographical Markets. The Hypothetical Monopolist Test
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ii. Demand and Supply Substitution
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iii. Product and Technology Markets
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iv. Competition without markets. From Innovation Markets to Competition in Innovation
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b. Market Power
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i. Indirect Methods of Establishing Market Power. Market Shares, Entry Barriers and other Indicia
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ii. Is Market Definition Always Necessary? Direct Methods of Establishing Market Power
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II. The Second Element: the Abusive or Anticompetitive Behaviour
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a. Types of Anticompetitive Conducts: Exclusionary and Exploitative Behaviours
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b. The Importance of Timing: Dominance as a Prerequisite under EU Law. Differences with US’ Monopolisation and Attempt to Monopolise
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c. Causation: The Relationship between Market Power, Anticompetitive Conduct and Anticompetitive Effects
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d. The Role of Intent
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C. The Particular Case of § 5 FTC Act
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Chapter V: Applying Competition Rules to Patent Proceedings: The Experience in the US and in the EU
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1. The Interaction between Intellectual Property Rights and Competition Law
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A. Tension and Complementarity
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I. Social and Economic Functions of the Patent System
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II. Patents and Market Power
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III. Reciprocal Goals but Conflicting Means
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B. When is Competition Enforcement Warranted in the Intellectual Property Arena?
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I. The Scenario in the US
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a. Evolution of the Interrelation between Antitrust and Intellectual Property
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b. Antitrust Immunity and the Noerr Doctrine
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c. The Patent Misuse Doctrine
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II. The European Approach
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a. Existence v Exercise Dichotomy
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b. The Specific Subject-Matter Standard
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c. Current Stage of the Debate
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d. Is there a Petitioning Immunity Doctrine in Europe?
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2. How can Deceptive Conducts before the Patent Office Affect Competition? The Experience and Challenges under US and EU law
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A. US Case Law. Fraud to the Patent Office and Misuse of Orange Book Listings
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I. Walker Process and its Progeny
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a. The Walker Process decision
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b. The Walker Process Legacy
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c. The Handgards or ‘Bad Faith Litigation’ Antitrust Claim
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II. Orange Book Cases
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B. EU Competition Law. Improper Acquisition of Intellectual Property Rights. Impact on Member States’ Competition Practice
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I. The AstraZeneca Case
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a. Market Definition and its Dominance
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b. The First Abuse
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c. The Second Abuse
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II. AstraZeneca’s Aftermath: Cases in EU Member States
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3. Closing Remarks and Open Questions
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Chapter VI: Searching for a Workable Theory of Harm
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1. Introduction
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2. The Sham or Vexatious Litigation Doctrine
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A. The Development of Sham as an Antitrust Doctrine in the US and in the EU
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I. Sanctions under Other Areas of Law
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II. Sham as an Antitrust Injury in US Case Law
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III. Vexatious Litigation in the EU
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B. The Theory of Harm Underlying the Sham Doctrine
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I. Antitrust Injury
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II. The Two-Pronged Test in the US and in the EU
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a. Objective Baselessness or ‘Legal Inviability’
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b. Intent or ‘Economic Inviability’
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III. Individual vs Patterns of Anticompetitive Litigation
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IV. Litigation as part of a Broader Pattern of Conduct
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C. Wrapping-up: A Simple Genus-Species Relationship?
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3. Deceptive Conduct before the Patent Office as a Case of Inducing Government Action through Improper Means
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A. Deceptively Inducing Government Action as a Competition Law Concern
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I. The General Question under US Law
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II. The General Question under EU Law
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III. Can a Deceptive Conduct before the Patent Office be analysed as an Illegitimate Inducement of Government Action?
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B. Elements for Competition Assessment
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I. Materiality and Causal Connection
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II. Conceptualisation of the Misconduct
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III. Ministerial Acts and Discretion of the Patent Office
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IV. Effects on Competition
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a. Exclusionary Effects of Improperly Granted Patents
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b. Scope of and Entitlement to the Patent
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c. Consumer Harm and Objective Justifications
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V. Market Power
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a. The Case under § 2 Sherman Act. Monopolisation and Attempt to Monopolise
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b. The Case under art 102 TFEU. Market Dominance as a Pre-requisite
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C. Ownership or Enforcement of an Improperly Obtained Patent as an Antitrust Concern
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I. The Case under US Law and Walker Process’ Enforcement Requirement
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II. The Case under EU Law
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a. A case for Article 102(a) TFEU or duty to license?
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b. ‘Single and Continuous’ Abuses
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c. Ownership or Enforcement as Separate Exclusionary Abuses?
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299–318
PART III: CONCLUSIONS
299–318
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Chapter VII: Summary and Conclusions
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1. The Role of Patent Applicants in the US and in Europe. Duties and Remedies under Patent Law
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A. The Scenario under US Law. A Strict Duty of Candour and the Inequitable Conduct Doctrine
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B. The Scenario under EU Law
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C. Would it be Desirable for Europe to Implement an Increased Duty of Candour or an Inequitable Conduct Doctrine?
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I. Extent of Patent Applicant’s Duties
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II. Legal Consequences of the Deceitful Conduct
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2. The Patent Applicant’s Conduct as a Competition Law Concern
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A. The Experience so far in the US and in the EU
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I. The Scenario in the US: Walker Process and its Progeny
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II. The Scenario in the EU: AstraZeneca
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B. Sham or Vexatious Litigation Distinguished
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C. Deceptive Conduct before the Patent Office as a Case of Inducing Government Action through Improper Means
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I. The General Framework in the US and in the EU
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II. Elements for Competition Assessment
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a. Causal Link
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b. Conceptualisation of the Misconduct
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c. Discretion of the Patent Office
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d. Anticompetitive Effects
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e. Market Power
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III. Ownership or Enforcement of Fraudulently Obtained Patents
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319–335
Bibliography
319–335
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Deceptive Conducts before the Patent Office , page 117 - 298
PART II: THE IMPROPER ACQUISITION OF PATENTS AS A COMPETITION LAW PROBLEM
Autoren
Eugenio Hoss
DOI
doi.org/10.5771/9783748902577-117
ISBN print: 978-3-8487-6134-0
ISBN online: 978-3-7489-0257-7
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