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美国最高法院向“强制收取过期专利授权使用费”说不

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  • Time of issue:2016-08-15 16:31
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(Summary description)南京华讯报:美国最高法院审理过的斯蒂芬•金布尔诉漫威娱乐有限公司(Kimblevs.MarvelEntertainment,LLC)专利侵权一案或许可以给我们一些启示。该案中,美国最高院判决专利权期满后,专利权所有人不得强制收取相关专利的授权费。  正如多年前的Brulotte诉ThysCo.侵权案一样,否定到期专利可以继续收取授权使用费的司法定论,其影响不只限于专利到期后专利费的问题,而是表明了

美国最高法院向“强制收取过期专利授权使用费”说不

(Summary description)南京华讯报:美国最高法院审理过的斯蒂芬•金布尔诉漫威娱乐有限公司(Kimblevs.MarvelEntertainment,LLC)专利侵权一案或许可以给我们一些启示。该案中,美国最高院判决专利权期满后,专利权所有人不得强制收取相关专利的授权费。  正如多年前的Brulotte诉ThysCo.侵权案一样,否定到期专利可以继续收取授权使用费的司法定论,其影响不只限于专利到期后专利费的问题,而是表明了

  • Categories:最新消息
  • Author:
  • Origin:
  • Time of issue:2016-08-15 16:31
  • Views:
Information

  南京华讯报:美国最高法院审理过的斯蒂芬•金布尔诉漫威娱乐有限公司(Kimble vs. Marvel Entertainment, LLC)专利侵权一案或许可以给我们一些启示。该案中,美国最高院判决专利权期满后,专利权所有人不得强制收取相关专利的授权费。

  正如多年前的Brulotte诉Thys Co.侵权案一样,否定到期专利可以继续收取授权使用费的司法定论,其影响不只限于专利到期后专利费的问题,而是表明了在经济收益和鼓励创新之间进行抉择的一种态度。

  我不想无期限支付专利使用费

  斯蒂芬•金布尔是早前一项玩具专利的权利人,该玩具专利描述的是从手掌喷出加压泡沫蜘蛛网的技术,与超凡蜘蛛侠的人物特征极其相似。漫威娱乐获悉该专利后,在未获得允许的情况下,开始制造并销售具有该专利特征的玩具。

  1997年,金布尔以专利侵权起诉漫威娱乐,此后双方达成和解协议:金布尔将该项技术的专利权授权给漫威娱乐使用,漫威娱乐除需一次性支付金布尔约50万美元的费用外,还需将未来销售该玩具销售额的3%作为授权费给付给金布尔。但协议中却并没有具体说明,漫威娱乐支付授权费的对价义务将持续多长时间,即在合同履行期限约定上存在缺位。

  于是问题也随之而来。

  2010年,涉案专利权期满,漫威娱乐不想再继续支付专利使用费,而且找出了此前的Brulotte诉Thys Co.侵权案例,坚持认为,专利权期满后,专利持有人收取授权费的权利也应随之消失。

  在此前的Brulotte诉Thys Co.案件中,美国最高院否认了要求专利机械购买者在机械的专利权过期后继续支付使用该机械专利的专利费的合同。法院认为,在专利权过期后要求支付专利费的做法是不被允许的,因为这种做法试图将专利权扩展至该专利进入公共领域后的日期。最高法院认为这构成了专利滥用,并且本身是非法的。

  然而在金布尔与漫威娱乐的这起关于专利授权费的案件中,金布尔却认为,此前与漫威娱乐签署的协议是符合专利法相应条款的,而且该协议是得到了双方的认可才签订的。当时授权给漫威娱乐使用的不止是涉案的专利技术,还有专利技术背后一系列相关的具体制作细节。这些都是漫威娱乐从中获益的主要因素。如果参照Brulotte诉Thys Co.案件,否认在专利权过期后的专利使用费收取,那么将对专利权人的利益造成不公平的损害。

  虽然金布尔极力为自己辩护,但美国最高法院还是判定,其不得向漫威娱乐强制收取过期专利的授权使用费。

  重点是创新而非市场

  其实在该案中所引用的Brulotte诉Thys Co.侵权案,虽然已经过去了几十年,但在美国的司法及理论界一直存在争议。

  经济学家们批评这一裁决,认为允许支付到期专利技术的专利费可以为经济发展带来长期受益:鉴于专利权人可以在更长的一段时间里收取专利授权使用费,从而使得专利被许可者可能在专利有效期内支付较低的专利许可费,这样专利产品的消费价格将下调,与替代性产品相比专利产品将更具竞争力,更多的企业能够支付得起专利许可费,也可以促进被专利者之间的竞争。

  但美国最高法院却认为,上述的经济学和市场竞争的问题并不是专利法所重点考虑的。而专利法也不像《舍曼法案》(美国的反垄断法)那样,并不旨在实现市场竞争的最大化。因为专利法最主要的关注点是促进创新,由此专利法划出了一条非常明确的界限,指明在一定年头后专利权是否有效,从而使到期后的专利不受任何限制进行使用,促进整个社会的后续发展和在此基础上的再创新。

  正如芝加哥约翰马歇尔法学院的Daryl Lim教授所说:“最高法院非常正确的认识到了专利法的特征,即重点放在公共领域及创新上,而非市场上。因此,法院关注的核心问题是阻止专利权在专利保护期外的延长以及确保专利所涉标的物在专利到期后能被免费使用。”

  但在中国,并没有明文规定,专利权期满后专利持有人不得继续向专利许可获得者收取授权费用。为了避免不必要的麻烦及损失,大家在签署授权合同之前,南京华讯认为应注意以下几点:

  1、协议中包含多项专利:若一份协议中包含多项专利,专利许可获得者可以要求签署多个协议,如果这些专利到期的时间不一样,那么专利许可人就可按最晚期限收取专利授权费。

  2、分期偿还:专利许可人在与专利许可获得者签署授权文件时,通常要求专利许可获得者一次性支付几十年的专利授权费,此时,专利许可获得者就可要求分期支付,这样可以避免支付专利权期满后的授权费用。

  3、捆绑授权:专利许可人在签署协议时将非专利权事务例如商业秘密,一并授权给专利许可获得者,即使专利权期满,专利许可人依然可以向许可获得者收取授权费,因为非专利权事务没有到期一说。

Electronic

Electronic Arts pledges free use for five accessibility patents

Electronic Arts pledges free use for five accessibility patents Recently, Electronic Arts (EA) announced a patent pledge that gives other companies and developers free access to five of its current accessibility-related patents and technology. The company promised not to enforce against any party for infringing any of the listed patents. Instead, EA hopes to encourage “innovation” and build new features that make video games more inclusive on a much larger scale by opening up the patents.  Electronic Arts (EA) is an American video game company founded in 1982. The company owns many popular and famous games, such as The Sims, SimCity, Apex Legends, Madden NFL and FIFA. Each of the games has more than 30 or 50 million sales volume. Significantly, esports involves FIFA and Apex Legends into the event list. Apex Legends has up to 1 billion players, and it is so popular that it has a Switch version. Within the freely available patents, one of which grabs everyone’s attention -- Apex Legends’ ping system (patent No. US 11097189). The ping system in Apex Legends, which excellently allows players to make communication and teamwork quick and easy without hearing or speaking, has been praised both as an impressive alternative to voice chat and as a great accessibility feature for players with a variety of disabilities.  The other patents include the technology widely used in the FIFA and Madden NFL. The innovations can automatically detect and modify colors (patent No. US 10118097 and CN 107694092) and contrast ratios (patent No. US 10878540) to improve gamers’ visibility with colorblindness and low vision. Furthermore, one of the patents relates to personalized sound technology, helping players with hearing issues by modifying or creating music based on their preferences (patent No. US 10790919).   The code of the mentioned technology is published on EA’s GitHub, and it is open to all developers. Thus, the developers can use it or adapt it for their games without spending the costs to research. It is good that EA shares the patents for free use and aims to create an accessibility-increased gaming environment for players. However, it is not “unconditional” to use the listed patents. In the pledge, EA mentioned that it may terminate the promise for a specific party which files a patent infringement lawsuit or other patent proceedings against EA. We can see parts of EV’s ambition behind the announcement—to build a large game developer league and a community of shared interests.     Reference: https://www.ea.com/commitments/positive-play/accessibility-patent-pledge https://iknow.stpi.narl.org.tw/Post/Read.aspx?PostID=14562 https://www.polygon.com/22639469/apex-legends-electronic-arts-patent-pledge-accessibility-developers https://www.theverge.com/2021/8/24/22638535/ea-accessibility-patent-pledge-apex-legends-ping-system https://www.gamesradar.com/ea-secures-a-patent-for-the-apex-legends-ping-system-and-its-giving-it-away-for-free/ https://dotesports.com/apex-legends/news/apex-legends-ping-system-is-now-patent-free-for-accessibility https://www.nintendolife.com/news/2021/08/apex_legends_ping_system_now_patent-free_as_ea_announces_accessibility_pledge Recently, Electronic Arts (EA) announced a patent pledge that gives other companies and developers free access to five of its current accessibility-related patents and technology. The company promised not to enforce against any party for infringing any of the listed patents. Instead, EA hopes to encourage “innovation” and build new features that make video games more inclusive on a much larger scale by opening up the patents.    Electronic Arts (EA) is an American video game company founded in 1982. The company owns many popular and famous games, such as The Sims, SimCity, Apex Legends, Madden NFL and FIFA. Each of the games has more than 30 or 50 million sales volume. Significantly, esports involves FIFA and Apex Legends into the event list. Apex Legends has up to 1 billion players, and it is so popular that it has a Switch version.   Within the freely available patents, one of which grabs everyone’s attention -- Apex Legends’ ping system (patent No. US 11097189). The ping system in Apex Legends, which excellently allows players to make communication and teamwork quick and easy without hearing or speaking, has been praised both as an impressive alternative to voice chat and as a great accessibility feature for players with a variety of disabilities.    The other patents include the technology widely used in the FIFA and Madden NFL. The innovations can automatically detect and modify colors (patent No. US 10118097 and CN 107694092) and contrast ratios (patent No. US 10878540) to improve gamers’ visibility with colorblindness and low vision. Furthermore, one of the patents relates to personalized sound technology, helping players with hearing issues by modifying or creating music based on their preferences (patent No. US 10790919).   The
2021-10-22
The

The forum on "China's Intellectual Property-related Reform Measures and New Trends in Patent Litigation" will be held successfully!

The forum on "China's Intellectual Property-related Reform Measures and New Trends in Patent Litigation" will be held successfully! In response to the call for building a strong country with intellectual property rights, at 2 o'clock in the afternoon of October 21, the forum on "China's reform measures related to intellectual property rights and new trends in patent litigation" will be successfully held in Nanjing Jiangbei New District Industrial Technology Research and Innovation Park. The event was hosted by the Science and Technology Innovation Bureau of Nanjing Jiangbei New Area Management Committee, Nanjing Jiangbei New Area Industrial Technology Research and Innovation Park, Nanjing Intellectual Property Rights Protection Assistance Center Jiangbei New District Center, Nanjing Huaxun Intellectual Property Consultant Co., Ltd., Nanjing Intellectual Property Co-organized by the Protection Center (Nanjing Intellectual Property Rights Protection Assistance Center), Taiwan Pharmaceutical Development Association, and Gene Online. The director of Nanjing Intellectual Property Protection Center, Mou Xiaojian, delivered a speech. Director Mu expressed his warm congratulations on the holding of this event and introduced in detail the new pattern of intellectual property protection in Nanjing. He said: At present, Nanjing has implemented a rights protection assistance network in the municipal area. With full coverage, Nanjing Intellectual Property Protection Center is willing to closely communicate and interact with Nanjing's innovation entities, and provide relevant public welfare services such as rapid pre-review, rapid rights protection, and comprehensive utilization for enterprises in need. In addition, Huang Funan, CEO of Gene Online, was unable to come to congratulate due to the epidemic, and recorded a congratulatory video. In the video, he said: China Innovative Pharmaceuticals has already made many outstanding achievements on the international stage, and these are inseparable from intellectual property rights. The support of the company can also show the importance of intellectual property rights to biotechnology and pharmaceutical companies. This event invites four industry experts to focus on China's reform measures related to intellectual property rights and new trends in patent litigation, discuss with companies and universities, and make arrangements in advance. Dr. Qingchen Hou, general manager of Nanjing Huaxun Intellectual Property Consulting Co., Ltd., introduced the "Guidelines for Building a Powerful Country with Intellectual Property Rights (2021-2035)" and explained his views from four aspects: background, strategic layout, overall requirements, and organizational guarantees. . Subsequently, a detailed analysis of China's patent linkage system was carried out, and compared with the same types of cases at home and abroad, questions were raised: Why should we reward the first person who successfully challenged patents? Not the first person to file a P4 application? And have a series of discussions with you. Director Jiang Haijun of the Intellectual Property Protection Legal Committee of the Nanjing Lawyers Association gave a speech on three points: the problems after the amendment of the patent law, the enforceability of the amount of compensation, and the legal conflicts related to service inventions. Regarding the patent right evaluation report, he emphasized that the patentee, interested party or accused infringer can also proactively issue a patent right evaluation report. "Patent is a work of art that combines technology and law" is a message shared by Mr. Feng Tao from Jiangsu Junbo Law Firm at this event. Mr. Feng analyzes the big data of Chinese patent litigation cases through graphs and examples. Explore. The last topic of the event was shared by Guo Huangying, Intellectual Property Manager of Nanjing Huaxun Intellectual Property Agency (General Partnership)-China's Patent Infringement Judgment Principles and New Developments. Manager Guo explained to everyone the principles of patent infringement judgment and the necessity of patent infringement search and analysis before producing and selling products. In the intellectual property industry, ECCOM has been providing high-quality and professional comprehensive intellectual property services to enterprises and universities one step at a time. It also hopes that under the leadership of the state and the government, it will contribute to the building of a strong intellectual property nation in China. Make a contribution.
2021-10-22
Types

Types of patents that are easily overlooked- Design Patent

Types of patents that are easily overlooked- Design Patent In recent years, as the public’s awareness of intellectual property has increased, people have begun to consciously use the patent law to protect their intellectual property rights. However, in the process of implementation, they often only focus on invention patent and utility model patent, and tend to ignore the protection of design patent. Recently, Midea sued Haotaitai for two models of CXW-300-D998 and CXW-300-D908 Haotaitai brand range hoods In the case of suspected infringement of its design patent (patent number: ZL201930621598.X), the Guangzhou Intellectual Property Court made a first-instance judgment after hearing that it determined that the two products of Haotaitai constituted infringement, and ordered it to immediately stop the infringement and compensate Midea, The company's economic losses and reasonable expenses totaled 360,000 yuan. In fact, appearance infringement cases have occurred from time to time before, such as: "Molly" blind box design patent case, "Siemens" switch design patent infringement dispute case received a compensation of 6 million yuan, three Casio watch design patents were infringed Received a compensation of 8.8 million yuan and so on. The reason why people ignore the protection of design patents, in the final analysis, is that they have insufficient knowledge of design patents. Today, let's take a look at what is protected by design patents and what rights protections can we apply for? Design patent definition: Article 2 of the "Patent Law", design patent, refers to a new design that is aesthetically pleasing and suitable for industrial applications based on the shape, pattern, or combination of products, and the combination of color, shape, and pattern. Protected range: The shape of the product; the pattern of the product; the shape and pattern of the product; the shape and color of the product; the pattern and color of the product; the shape, pattern and color of the product. Protection period: The term of protection for design patent rights is 15 years, calculated from the date of filing. What are the conditions for applying for a design patent? The design should be aesthetically pleasing Appearance patents should be suitable for industrial applications The design patent application should be novel The design patent application should be inventiveness What are the advantages and functions of design patents? Protect the rights and interests of enterprises in product designs and fight against infringements in market competition. To enhance brand value, the quality and quantity of patents are the embodiment of the company's innovation ability and core competitiveness. Receive consumer recognition. If a company's new product appearance is filed for a patent in a timely manner, its appearance design will enjoy the exclusive right. Nowadays, consumers often choose products with trendy and beautiful appearance when buying their products. Applying for a design patent is a necessary condition for applying for a high-tech enterprise.
2021-09-26
Colopl

Colopl Settles Patent Infringement Lawsuit with Nintendo by Paying $30 Million

Colopl Settles Patent Infringement Lawsuit with Nintendo by Paying $30 Million   This August, Nintendo and a game developer Colopl announced that they have settled for patent infringement regarding White Cat Project (Shironeko Project in Japanese), a smartphone game developed by Colopl. Although both companies did not publicly share exact details of the settlement, at least it is sure that Colopl agreed to pay 3.3 billion yen (about US$30.2 million) as the settlement fee for the proceedings, including the future license of Nintendo's patents.    How did the battle begin?  Being developed and published by a Japanese game developer, Colopl, White Cat Project is a free-to-play action role-playing game for Android and iOS systems. The mobile game was launched in July 2014 as well as got a television anime adaptation in 2020. It is incredibly popular to have more than 50 million downloads. Furthermore, the game is set to receive a Switch version titled "Shironeko New Project".    In September 2016, Nintendo noted the Colopl's game and considered that the game had infringed on several of Nintendo's technology patents. The two companies communicated with each other for over a year; however, Nintendo did not accept the explanations from Colopl, and Nintendo filed a lawsuit against Colopl at the beginning of 2018.    Nintendo claimed that Colopl infringed 6 of its patents. These patents protect touch-screen joystick functionality (patent no. JP3734820), multiplayer connectivity (patent no. JP5595991, JP6271692), confirmation screens in sleep mode (patent no. JP4010533), character attacks based on touch input locations (patent no. JP4262217), and a shadow effect placed on characters hidden behind the game geometry (patent no. JP3637031).   These patents almost cover various ways of game technology, especially the patent  JP5595991 and JP6271692. Their patent family is wide-reaching, and many divisional applications of the family are pending in Japan. They protect a communication game system and its related devices. It is not easy to detect the patent's existence and boundary since this kind of hardcore technique is so common in the gaming field and our daily lives.     The five-year patent war has been settled.  After a five-year dispute, the situation appeared to turn in Nintendo's favor as the Switch maker increased its monetary demands, which convinced Colopl to strike a deal that lets it use the disputed patents. Furthermore, a Switch version of White Cat Project remains in the works at Colopl.    With the extraordinary losses of Colopl, the legal battle between the two companies came to an end.  
2021-09-09
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