IP Talks

About IP Talks

Conversations on intellectual property law, innovation, and global patent litigation with leading experts.

Publisher

Jan-Willem Prügel

Category

business · education

Language

en

Explicit

No

First episode

1 Oct 2024

Latest episode

10 Feb 2026

Latest episodes

13 episodes in the feed.

1. 

   10 Feb 2026

   #13 How Copyright struggles with GenAI(Oren Bracha – Season 2 – Episode 7)

   Professor Oren Bracha (University of Texas School of Law) informs us about what today’s debates over generative AI and copyright get right—and wrong. Bracha explains why many infringement claims based on AI training misunderstand what copyright is designed to protect, and why courts may be stretching familiar tools like fair use to address broader social concerns. The conversation also explores who should be liable when AI outputs are infringing, and why a risk-based, negligence-style approach could better address systemic harms. A wide-ranging discussion blending legal history, doctrine, and policy in the age of machine-made culture. 2025_Bracha_Generative AI’s Two Information Goods (https://ip-talks.com/wp-content/uploads/2026/02/2025_Bracha_Generative-AIs-Two-Information-Goods.pdf)Herunterladen (https://ip-talks.com/wp-content/uploads/2026/02/2025_Bracha_Generative-AIs-Two-Information-Goods.pdf) 2024_Bracha_The Work of Copyright in the Age of Machine Production (https://ip-talks.com/wp-content/uploads/2026/02/2024_Bracha_The-Work-of-Copyright-in-the-Age-of-Machine-Production.pdf)Herunterladen (https://ip-talks.com/wp-content/uploads/2026/02/2024_Bracha_The-Work-of-Copyright-in-the-Age-of-Machine-Production.pdf)

2. 

   3 Feb 2026

   #12 Disrupting Patent Prosecution with AI (Kristine Pashin – Season 2 – Episode 6)

   In this episode of IP Talks, host Jan-Willem Prügel interviews Kristine Pashin, a Silicon Valley-based scientist and entrepreneur, about her work in the patent space. Kristine, a Stanford graduate with a background in neural tissue engineering and biotech, co-founded Article IP, a company focused on streamlining the patent drafting and management process through an AI-powered platform. The platform can transform technical inventions into provisional patents and manage portfolios efficiently, drastically reducing the time and cost traditionally associated with patent drafting. Additionally, she co-founded Cadence Law Group to provide legal services that complement Article IP’s offerings. Jan and Kristin discuss the challenges and future goals of Article IP, its investor relationships, and Kristine’s commitment to innovation and transparency in the IP landscape. The episode also explores her personal journey, the technical and business expertise of her team, and their mission to democratize access to intellectual property.

3. 

   26 Jan 2026

   #11 – Myths in IP Law (Jessica Silbey – Season 2 – Episode 5)

   In this episode of IP Talks, guest is Professor Jessica Silbey, a leading U.S. scholar of intellectual property law, talks about how creativity and innovation actually work – and why intellectual property law often gets it wrong. Drawing on her interdisciplinary background in law, literature, and cultural studies, Jessica challenges the dominant assumption that IP law primarily incentivizes creativity through economic rewards. Based on extensive qualitative research with artists, scientists, and innovators, her book The Eureka Myth shows that creative work is driven less by ownership and exclusion, and more by intrinsic motivation, collaboration, identity, and community. The conversation explores how the “lone genius” narrative embedded in copyright and patent law fails to reflect the deeply iterative and collective nature of real-world innovation. She discusses how this mismatch affects patent inventorship disputes, why U.S. patent law’s refusal to recognize simultaneous invention is problematic, and how doctrines such as fair use, idea–expression, and de minimis copying could be applied more generously to align law with creative practice. The episode also dives into the often-overlooked doctrine of fact exclusion in copyright law, tracing its historical roots and explaining why keeping facts in the public domain is essential for democratic discourse and freedom of information. Turning to AI, Professor Jessica offers a nuanced perspective on training data, authorship, and control, arguing that copyright should focus on human agency rather than machine output. The discussion concludes with reflections on potential copyright reform, the risks of over-enforcement in the digital age, and the broader role of IP law in supporting creativity, innovation, and democratic values.

4. 

   20 Jan 2026

   #10 – IP Law and Free Speech(Rebecca Tushnet – Season 2 – Episode 4)

   In this episode, Harvard law professor Rebecca Tushnet takes us on a trip to the intricate balance between IP enforcement and First Amendment rights, discussing topics like fair use, generative AI, remix culture, and trademark law. The episode also explores the challenges posed by state and federal regulations on false advertising, digital personality rights, and age verification for online content. Rebecca shares her insights on how the current legal framework impacts free speech and offers ideas on potential legislative improvements.

5. 

   13 Jan 2026

   #9 – The Future of Health Care (Bertalan Meskó – Season 2 – Episode 3)

   Summary In this episode, we delve into the future of healthcare. Dr. Meskó, a physician and PhD in genomics, discusses how emerging technologies like artificial intelligence, digital health, and wearables are transforming global medicine. The conversation covers the importance of patient empowerment, the role of AI in medical diagnostics, and how personalized health tracking can revolutionize individual care. Dr. Meskó also shares practical advice for healthcare professionals on leveraging AI and technology in their practice. Whether you’re a policymaker, physician, or IP professional, this insightful discussion offers a comprehensive look into the technological shifts shaping the future of healthcare.

6. 

   5 Jan 2026

   #8 – Key Facts about U.S. Patent Litigation (Mark Lemley – Season 2 – Episode 2)

   In this episode of IP Talks, Mark Lemley, an esteemed legal scholar from Stanford Law School, about the significant changes and challenges within the U.S. patent system over the past few decades. The discussion covers topics such as the creation and impact of the Federal Circuit, the influence of the America Invents Act, and the rise of non-practicing entities (patent trolls) and their effect on patent litigation. We also delve deep into changes brought about by landmark cases like Alice Corp. vs. CLS Bank International that have redefined the landscape of software patents, and the implications of the Supreme Court decisions on genus claims in biotech and pharmaceuticals. Mark also shares insights into procedural adjustments in patent law, addresses forum shopping in litigation, and concludes with thoughts on the broader implications and the future direction of intellectual property law. Overall, the conversation provides a deep dive into the complexities and evolving nature of patent law in the U.S., offering valuable insights for legal professionals and innovators alike.

7. 

   25 Dec 2025

   #7 – The former WIPO Secretary General on Trade Secrets and Industrial Espionage(Francis Gurry – Season 2 – Episode 1)

   Summary In this episode of the IP Talks podcast, host Jan-Willem Prügel interviews Dr. Francis Gurry, an Australian lawyer and former Director General of the World Intellectual Property Organization (WIPO) from 2008 to 2020. Dr. Gurry, with an academic background in law from the University of Melbourne and the University of Cambridge, shares insights from his illustrious career, which includes overseeing the Patent Cooperation Treaty (PCT) and establishing the WIPO Arbitration and Mediation Center. The discussion covers a range of topics including the nuances of trade secrets, industrial espionage, China’s rising influence in the global knowledge economy, and the evolving landscape of intellectual property (IP) law. Dr. Gurry also reflects on historical instances of industrial espionage and the current geopolitical shifts towards closure and their impact on science, technology, and IP. The episode provides a deep dive into the complexities of IP law and trade secrets, making it a must-listen for IP practitioners and enthusiasts alike.

8. 

   11 Nov 2024

   #6 – The Wonky World of Domain Name Disputes (Ganna Prokhorova – Season 1 – Episode 6)

   Summary In this episode of IP Talks, Jan Willem Prügel hosts one of Ukraine’s leading intellectual property experts, Ganna Prokhorova. The discussion unveils the intricacies of domain name disputes, touching on cybersquatting, typosquatting, and the UDRP process. Ganna shares her unique journey into IP law, the challenges within the Ukrainian market, and her influential role in the International Trademark Association. Listeners will gain insights into the legal and emotional aspects of IP disputes, illustrated by compelling real-world cases, including a domain name battle involving Dropbox. The conversation also delves into Ganna’s involvement in art law, highlighting its niche yet significant impact. Essential listening for anyone interested in intellectual property law and domain name resolution. Time Stamps 00:00 Introduction and Disclaimer 00:34 Guest Introduction: Ghana, Leading IP Expert 02:26 Ghana’s Journey into Intellectual Property 05:43 The IP Landscape in Ukraine 10:36 Ghana’s Role in INTA 15:56 Understanding Domain Name Disputes 16:47 The UDRP Process and Cyber Squatting 27:04 Domain Name Disputes in Ukraine 38:11 Impact of COVID-19 on Domain Name Disputes 38:41 Popular Domain Zones and Disputes 40:20 Economics of Domain Name Registrations 43:20 Challenges in Filing Domain Name Disputes 45:25 Appeal Procedures and Legal Challenges 46:17 Case Study: Michael Kors Domain Dispute 51:51 The Dropbox Domain Name Saga 01:03:09 Art Law: A Niche but Growing Field 01:12:16 Advice for Young Lawyers 01:13:00 Conclusion and Farewell Show notes More on domain name disputes: https://www.wipo.int/amc/en/domains/ (https://www.wipo.int/amc/en/domains/) Original Dropbox story told by the founder (starts at around 01:08:40): https://tim.blog/2018/08/29/the-tim-ferriss-show-transcripts-drew-houston/ (https://tim.blog/2018/08/29/the-tim-ferriss-show-transcripts-drew-houston/) One of Ganna’s favorite pieces of art: https://totallyhistory.com/composition-vii/ (https://totallyhistory.com/composition-vii/) Ganna’s book recommendation: https://en.wikipedia.org/wiki/Lessons_in_Chemistry_(novel) (https://en.wikipedia.org/wiki/Lessons_in_Chemistry_(novel)) Transcript Disclaimer, the views, opinions, and statements expressed by the hosts and guests on this podcast are entirely their own and do not represent or reflect the views of their employers or any affiliated organizations. Additionally, the content shared on this podcast is for informational purposes only. and does not constitute legal advice. For any legal matters, listeners should consult a qualified attorney or legal professional to receive advice tailored to their specific situation. IP Talks is a Jan Willem Prugel production, all rights reserved. This episode’s guest is gonna put a holdover. Ghana is one of the leading IP experts in Ukraine. And partner of one of the leading IP boutique firms. She’s also a domain name, panelist for why post dispatch. Dispute resolution system. Kinda also works as an arbiter. Arbitrator at the court of arbitration for art Kapha. In the hake in the Netherlands. And if that wasn’t enough, she’s. Is also a chair of the copyright committee for the international trademark association. into. Her specialties are prosecution and litigation. Of trademarks and designs copyright. Border seizure. Proceedings. IP dispute resolution. IP litigation, domain name disputes, unfair competition. Assignments and licenses among others. In this episode, we primarily talk about domain name disputes that. If someone uses the names of a website in bad faith, for example, As a trademark infringement. It is a less known area of IP law. But one that is quite fascinating and we are lucky to have one of the greatest. IP experts. As a guest to introduce us into this fascinating. World. So without further ado, please enjoy this episode with. Welcome to IP Talks, the world’s greatest private podcast on all things intellectual property, starring some of the world’s leading IP practitioners and your host, Jan Willem Prügel. You’re in for a treat. Enjoy. Thank you so much for coming Ghana. I’m very happy that you could find the time and we have lots of things to cover. First, I would like to start by asking you to tell us a bit about your background and how you got into intellectual property law in general. Oh, thank you so much for having me today. It was finally, we did it, because we were planning to have this interview for quite some time. Yeah. So I’m happy that we finally made it and I’m very happy proud and happy that you invited me to be the part of your podcast because I will tell you the truth. This is actually my first podcast. I was many times in different interviews or speakers, but never in podcast. This is a great opportunity for me. And it is not a challenge, but it’s quite an interesting experience. So thank you so much for inviting me. In terms of getting into ip? My career started like 19 years ago, so it’s quite long time ago. And at that time in Ukraine, IP was not that popular. I would tell. Like it was not popular at all. And I did a few trademark violence in 2004, and then since I, back in that time, I was the. I was working for one small law company, which was doing everything and nothing specific. So I understood that I cannot do one day licensing issues. The next day, some criminal issues and the day of the family law practice, because I will never be very good into that. And therefore, since, again, it was 2004 and five. And internet was not that popular. We already had the internet, but it was really different. So all the information about the practice, you could have. only from one of the best, one of the most famous magazines. We were buying magazines, actually. So that was legal practice magazine. And then every year they were publishing the best law firms in Ukraine. And of course, thinking of where I would like to be I was really searching and I, and in 2005, I sent my CV to one of the companies. And that was one of the first AP boutiques in Ukraine. So when Ukraine became independent, almost a few years after that was the company who was doing an APN, that was a great experience because it was I was working in that company for 12 years. I, yeah, that was great experience because in the first interview, I met my manager partner was with me for the next 12 years and she told me a very interesting phrase, which I still remember this day, she told me like IP draws you in and once you are in, it’s for life. So I feel it absolutely. I have even goosebumps saying that and I’m in IP for 19 years. I love it every single day. It’s always interesting. It’s always outside of the box. So yeah, I think could I briefly, Ask you the IP space in Ukraine or the private IP space. Do you also have some large national law firms that also do IP or is the IP space mostly dominated by IP boutiques? It is really mostly dominated by IP boutiques because first of all, IP, it’s not a niche in Ukraine, but it covers like five percent of the whole legal market. So still quite tiny market in Ukraine. Therefore, we have some companies, multi practice like Baker and McKinsey. They have IP department here in Ukraine. But we also have those who are specifically in IP. And I guess for us, for those companies, because I’m also from IP boutique and I had the experience working in IP boutique and then in multi practice. But I personally believe, and I think that many colleagues will also relate to that, If you really want to develop your IP practice and you have really a tiny market, you need to be in IP boutique because you need to have balanced prosecution and enforcement. Otherwise we know that normally those big companies, they are mostly focused on high margin cases. So like the companies with multi practice, they are not. Too much interested to have those like hundreds of filings and having, all those invoices for the filing. So it’s a lot of administrative work and it’s not possible to realize to if you are just in this multi practice term. So I am super happy that I started with IP boutique 12 years. Then I was having my experience with multi practice and then in COVID times, which was super. Difficult decision, but we made it because we knew that we need to go further, we need to develop the practice, and we decided to establish our firm IP Boutique. And I’m happy and I think that this is the way how it should be, at least in Ukrainian small market. I you, you are now at a different firm than you originally started, or are you still with that firm? Yeah. O okay. No. So that was 12 years and then a few years in the malpractice and then already. more than four years in this firm. Can you explain to me what multi practice means? I had never heard that term. So multi practice is like a Baker McKenzie again. I don’t know. Oh, like a full service, like a full service. A full service, yes, multi service, lots of practices. Yeah. Okay. Interesting. And can, so what sort of IP work have you done personally and what would you say is your focus on, or did you pick any focus and if so, why? I’m happy that we have, and I have personally dealt with all the objects, all the IP objects. So we deal with mainly trademarks. patterns, copyright design, but also GIs or even plant varieties, which is really just a few companies can do. So I, because this is just the big experience. 19 years, it’s a big experience. So I dealt with any type of licensing or franchising agreements, any type of agreements or Also, anti counterfeiting and again, because of the tiny market in comparison to Germany, you normally have the lawyer who works only with patents or even with patent litigation. Or those who are working only with copyright. In Ukraine, we are different. We try to work with all of the objects because, again, of the practice. We cannot do only patent enforcement because we don’t have so much, so many cases. So from one point, it’s good. From another point, of course, we see some, something weak points, but generally I’m happy to have this part. And personally, I work mainly with trademark copyrighted in design. I see. And are there any types of clients that you focus on mostly or that you ended up having a certain industry that you focus on? Or is it broad across the board? Yeah the main industries, I would say that they are always pharma then agro because we are agricultural country. It of course, Ukrainian Ukraine is very popular for it. And, and basically all the industry, but I would say that there are more. So FMCG also Sorry, no, I don’t, I was thinking about if I knew it, but I don’t know what is FMCG? FMCG, so it’s like all the household goods. Yeah, so also the producer of some household goods the companies like DM, for example, your famous is, they are also there. I see. Okay. Wonderful. So that gives us a great overview. And I read that you’re also involved in INTA or INTA. Can you tell us a bit more about that and what you do there? Yeah, sure. So this is one of the things that I’m really. Proud of because when I started in IEP Intel was something like, wow, Intel, this is the biggest achievement you can only have to be a member of that, to be a part of that. And then I understood also that energy flows where attention goes. So if you want to be good in something, you really need to put lots of efforts. And when I started doing those regular. Annual meetings, then leadership meetings and being more active and active. And if four years ago, I was appointed to be the chair of the subcommittee at the copyright committee. And now I’m chairing the copyright committee of NTA with 150 people. Congratulations. Yes. Thank you so much. And actually, I am the first ever Ukrainian who ever really shared the committee. Yeah. So for us, it was a big, a huge success. And even our, the head of our IP office, when I published this information in Facebook, she congratulated me because it’s really, it’s achievement. It’s not only because of me personally, but it’s about the country because you became more heard, you have your own voice. And also, I feel personally, because also because of specific situation we are all now, I feel personally my responsibility before my country. I’m the ambassador of Ukraine. I love my country a lot. And it gives me also some more possibility to be heard. Could you explain to us for some of the listeners who may not be familiar what INT or Inter is? So it’s the biggest association which unites organizations, private practitioners and different companies. And the main idea is to promote. IP in the world to be also to influence on the lawmakings to also help to develop the laws in different countries. So for example, for Ukraine, it’s also very helpful because we can see the other practices in other more developed countries in terms of IP, because, Ukraine is still from the Soviet Union. We have lots of things. We are dealing with them quite successful, I would say, but in terms of being present in other organizations and associations, being being able to speak and network with our colleagues from other countries. It’s always a plus because then we can influence, we can bring something new, something which is already working quite good in other countries. We can change the law, we can, Make some proposals to the government and to our lawmakers So yeah, this is the way it normally goes So it’s basically this association united menu professionals and we have lots of Different committees, which are taking some specific topics and working and on that topics and developing lots of things. And we can, for example, I just made some comments when the U. S. called for they were working on AI, and they were and NTA made some document proposing the view of the practitioners from the U. S., how they see some law clauses may be implemented. That’s important stuff. That’s very important. Exactly. And if you want to be very active, you can definitely have this possibility. So I think it’s really helpful for all who are interested in that. So how can they Register their interest. What would be the first step? So the first step, you just need to be the member of INTA. You need to apply that. So there is specific procedure for registration. You are applying to that. You pay your annual fees. You can then attend the annual meetings. But it’s not, because for example, They collect, so since there are annual meetings and they gather 10, 12, 14, 000 of people in one city. So it’s quite a huge amount. So you can imagine. And also, so it’s a great networking field, but also if you want to be active and you can, if you want to be more into some topics, you need to apply to the committee. So there are lots of committees at the INTA website and you can choose what is better for you depending on your practice. Every two years you can apply for that. Very interesting and thank you so much for pointing that out. I think some people will be interested in that and may not have heard about it before. And this leads us to our main topic. topic that we have today, which is one of your specialties and which I must say I hadn’t really heard before, but I found super interesting the moment I read about it. And so it’s domain name disputes. Also, I believe it’s called It’s connected to cybersquatting, although I’m not quite sure how they’re related. But could you tell us what domain name disputes entails and maybe what cybersquatting has to do with it? Yes, it’s actually one of also the areas I’m specializing in. And so basically, the domain name disputes is the part of the brand protection on the internet. The domain name disputes. Nowadays can be sold through the very great mechanism which was created back in 1999, which is called uniform domain name dispute resolution policy or procedure. It was developed to address the increasing issue of cyber squatting and cyber squatting is basically the registration of domain names. Which are containing mainly trademark or brand name or even commercial designation that belongs to another person, but with the intent of reselling them or using them in bad faith. Since we all know that domain names are very easy to register and it goes really peanuts, and for that, since before creation UDRP, there was the only mechanism to solve this disputed and conflicted domain name, just to go through the court and You know how much time you need to solve this issue and how time consuming and cost consuming it can be. Therefore, that was the great idea by ICON to develop this procedure. It helps the complainant to file the dispute within a approved dispute resolution providers. And nowadays there are six providers. One of the most famous is Viporg. Whatever we can call them, they help to solve the domain name dispute without the need to go through the traditional court procedure. Okay. Before, sorry if I interrupt you before we continue, I have a few questions. So in remarks. So the first thing, so basically one of the cases of domain name squatting or cyber squatting would be for example, if Coca Cola. had been very successful for some reason wasn’t on the internet and I registered coca cola. com and so they couldn’t have it. Because I know they are a big brand and they want to use it, but I took it away from them and then in hopes of capitalizing on their brand, that would be considered cybersquatting or domain name. Yeah, yeah, absolutely. Absolutely. Or also similar to that is typosquatting. For example, you decided to register at Abibas and you’re trying to, yeah, you’re trying to get all the fame of Adidas. Let me try if that is still open. Yeah, I assume that you can, since there are lots of new TLDs like top domain we now have dot club dot. Area dot vine dot art. So you can have so many domain names and definitely be in the company. You cannot register the domain name everywhere in every TLD. Therefore it’s still possible, but what do you need to have to file the UDP? You need to prove only three elements. The first element is that the disputed domain name is identical or confusingly similar to the trademark that you have. There’s some patent people among our listeners, or maybe non experts. When you’re using a domain name that is actually the name of a service. Or of a product basically, or the trademark, then you’re using their trademark. And so thereby you are committing trademark infringement. Is that. The how it works. Yeah. Yeah. In the domain name, it might be the either full trademark registered by you before the Registration of the domain name. We are talking only about classical because there are lots of difficult domain name disputes, but Classically, it looks like you have a trademark registration meaning the sign You the word that belongs to you, to some kind of your business. And the cyber squatter registered either similar or identical domain name, which reminds or which is really similar to your trademark. So then you have the standing requirement because you are the trademark you have a first your trademark registration, and then you have a standing requirement to file the complaint. The other two elements is that the registrant of your, of this disputed domain name doesn’t have rights or legitimate interest. So there is also some procedure that how you need to describe and to prove that. The registrant of the disputed domain name didn’t have the authorization from you to use this trademark is not your distributor. So you didn’t have any agreements to that. And there is some other things that you need to prove. So that was the second element, no rights and legitimate interest. And making, sorry, wanted to make money. Pre presumably is not a legitimate interest because he doesn’t have the right, and this is actually the third one. The was, so the third one is that the domain name was registered and used in bad faith. So if you want to sell the domain name and there are actually lots of websites, that are selling the domain name and you can prove that that. Bad guy registered and want to make a profit from this domain name, then the registration is in bad faith. Three elements. If you see them, you can definitely file the UGRP complaint. And within two months, in general, you will get your disputed domain name either transferred to you or canceled. Wow. That’s quick. Again, two months. Yes. That’s great. Yes. In comparison to court, it will take you a few years. I don’t know how much time you can have in Germany, but yes, it can in Ukraine, one, two years, sometimes more. How are they able to do it so quickly and who’s deciding that , are those judges or who’s doing that? Yeah, so that’s, actually those are judges within those providers that I just told you. So WIPO has, WIPO Arbitration and Mediation Center, and there are arbitrators or judges. So I’m also the arbitrator at the, at VIPOR and also at Czech Arbitration Court. I do both actually. I represent clients when they file the complaint, but I’m also the panelist who issues the decision. And this is a great job because I’m, yeah, because you’re you’re the judge actually, because you see the papers of the complainant, you see the papers of the respondent and you are having specific rules according to which you need to do the domain name case. And then you have your decision. So it’s super interesting. That’s, that’s awesome. So asking the source, what’s your process? How do you render decisions so quickly? Is it always easy so you can do it quickly? Is it like a formalized process or are you just quicker than those state officials? Yes, if it is clear cyber question, so of course it’s much more easier. And since I’m doing UGRP since 2019, I’m quite, fast nowadays to make the decision. Yes you have UGRP policy, UGRP rules, so everything is already prescribed. You have also overview of the main cases and since you have some experience, so it helps you also a lot. So how do you become a judge or an arbitrator for the WIPO or some others? I will tell you the truth. You just need to have a huge desire to be the panelist at any kind of centers because there is no specific procedure. How you can apply and you just need to feel it. If you want something, you need to, prove yourself that you can do that, that you have some experience working with domain name disputes. And honestly, I was trying to be the panelist of at the Vipor more than with one year, I tried to get in contact with them. I really, but it was in 2019. I don’t know how it is now. So if someone wants to also take the chance I cannot make any. They cannot sue you. It was a big disclaimer. It was in 2019. It was my profile, my personal case. So it just worked out because I think that I prove that I can be, and I, and in that time, I already had quite a big experience in IP in general, and also the main name disputes, although not in UDP, but also in court. So I knew that, and I was going to the workshop that FIPA had. And and I think that it was a really. Big step, I would say Another office that you were granted. Congratulations as well. Yes. Thank you. It’s a great thing. The one who is very interested into trademarks and the main, because the main names are more related to trademark, of course. So it’s definitely a great thing to try. Is that like an ex parte proceeding where you just deal with the complaint or do you hear the parties? No. It’s you can do online, but I think that no one have it before. And mainly it’s documents. So it’s a change of documents. There are specific rules, how and when, so there is the timeline and then as the panelists, you have 14 days to make a decision. 14 days. Yeah. So this is actually why it is so fast because also sometimes takes for the center to check all the things, check the payment, then also grant some time to the respondent to receive their response and then the procedure starts. And you also mentioned earlier I can I looked that up so I vaguely know what it is, but could you briefly let us know more or less what we’re talking about? ICON is responsible for coordinating all of the internet in general. They are responsible for technical maintenance of the DNS and internet addresses. And ICANN was, the organization, which is actually, Produced this proceedings, UDLP proceedings. So they are one who are the main body that is responsible for the internet global domain name system. I see. Okay. Very interesting. Yes, I would like to go back to Ukraine because this dispute resolution procedure is quite new for Ukraine and it was adopted in 2019. So it’s just five years. Although it was quite successful. So during the year, for example, in 2021, we had 30 cases. So in two years, it’s quite a lot. So you can really see the statistics and it was growing and growing until we had. 2022. And when the war started, of course, that was the big challenge for everyone. And VIPA decided that they will put it on hold. Therefore, within one year, this procedure was not available because they just could not guarantee that If the respondent is somewhere in the place where there is the battlefield and they cannot respond during this specific timeline, as I told you, just don’t have lots of time and they just wanted to make sure that all the parties have equal rights. Therefore, for the whole year, this procedure was suspended and then resumed last year in July, it was in summer, and now it became more and more popular again. Last year it was eight cases, this year it’s already nine cases, and we are already representing of our clients, we are planning to file a few cases this and next week. Therefore we’ll, we will somehow influence the statistics, but in terms of the interest so since Ukraine didn’t adopt the UDP in general, but the variation of this UDP we have a few differences. And I think that will be also interesting for your listeners. For example, if you want to register a domain name dot UA for example young William dot UA, you need to have trademark registered in Ukraine. That’s absolutely obligatory, because in many other countries, if you want to register, I don’t know, de, I think you don’t need to be the holder of the trademark. So in Ukraine, if you want to have, I think that there is no mandatory application. And so if you want to have to have the registration in the second level, domain name dot UA, you need to have a trademark registered, but if you want to have com UA or key of UA you don’t need it. So this is also interesting. As I told you before when you. file the complaint, you can ask either for transfer, so to be the domain name holder by yourself or to cancel that. And we had a case, it was about OPPO, so OPPO UA, there was a conflict in domain name and the company who is the real holder of this trademark, they filed domain name and asked for the transfer. But in that time, so they had trademark registered somewhere in the world, but they didn’t have the trademark registered in Ukraine. So the panelists made the decision, okay, we grant you that you can now be the holder of this oppo. ua domain name, but then they found out that. They just don’t have the trademark registration and they cannot enforce the decision. That was also a very funny thing. So if you want to have the domain name transferred in your favor, you need to be the trademark. And this is the domain name dot UA. So you need to be the registered trademark or the licensee. Or, for example, we also have very interesting, and I think that some colleagues of mine told me that they have the same in China. That in Ukraine, although we have only one official language, Ukrainian, but since we were the part of Soviet Union, we have lots of people still speaking not now but before the war especially, we had lots of people speaking Russian. And therefore, we have different transliterations, different pronunciations, and we have domain names. For example, the capital of Ukraine is Kyiv. In Ukrainian, it is spelled Kyiv. In Russian, Kyiv is Kiev. And spelling and writing is different. So therefore, Sorry, I don’t think I heard the difference. Can you say it again in both? So Ukrainian is Kyiv. It’s K Y I V, Kyiv. And in Russian is Kiev. It’s K I E V. Okay. The latter is a bit like we say it in German as well. Yes. And those domain names are called mirror domain names. So only one person can, yeah, because it’s layer, they’re mirroring each other and only one person, one registrant can have both domain names, but by itself. So Kiev and Kiev, only one registrar. And just recently I had as the panelists first ever case about this mural domain names or anywhere in Ukraine. No, it was in Ukraine because not so many countries have this mural domain names. And when I was considering the case, I had the It was against Nespresso Kiev ua, so Nespresso, Kiev ua. And finally it was found out that the registrant of that domain name has another MI domain name, which was Nespresso, Kiev ua. Since only one person can have both. Dan as the panelists, I issued the order that the complainant had the right to include the second domain name in the complaint, and only Dan, because otherwise I, you could not transfer. So only one person can be the registrant on both. And only after that there was a decision. So both the, my names were transferred to the complainant. Sometimes what I like about AP or maybe even about life, sometimes you think that, everything on the subject, but it always, the life shows you that there are so many differences and that you always can find something where you would like to explain, explore, learn more. And this is actually what makes our life even more interesting. Absolutely. Said. I still have a lot of questions, follow up questions. First of all, When you say you register a domain, so for example, I have the domain IP talks that I use, but I know I didn’t buy it because I know that domain names can be really expensive. So when you say register, is that the same as getting the ownership of the domain name? Yeah, there is actually, you pointed out the question with that is always discussable. What is ownership? What is, so basically it is that. The registrar, the one who is allowed to give you domain, domain names, because those organizations that are having those. They delegated in your favor some of the domain name and it is kind of ownership because I don’t know how exactly, what is the other word that we can use in this respect, but you Maybe rent? So I think I’m renting my It’s kind of renting, yes, because you’re paying once a year or once in a few years. So yes. And this domain name is delegated in your favor and then you became the registrant too. I see. And so the, The person, the registrar is that’s not a state actor. That’s someone from ICANN or WIPO. Yeah. So for example, what I can say about Ukraine, we have the administrator of domain name zone. It’s only one, which was authorized by ICANN. So the administrator of Ukrainian domain zone is hostmaster. ua. And this organization allows other players to register specific domain names and then they are delegating those to the final users like you. Yeah, okay. I see. It’s like giving a license maybe, because it’s not quite ownership. It’s the permission to use it. There is something different. I will be really quite, careful with saying those words because ownership is ownership as lawyers. We both know what it doesn’t mean, but in terms of the domain names, we just tell those things that are Easy. Delegation, registration, and that’s it. We are not diving in because there are literally lots of articles saying domain name is also, someone even say that domain name is one of the IP objects. So there are lots of books saying that This is the another not trademark, nothing else. But this is also the separate AP object. Someone is saying that this is the ownership and there is still lots of discussions and I don’t want to be responsible for something else. So I just want to. But it’s already, it’s already helpful to know that it’s not quite clear cut. Yeah, so another thing I’m wondering about is, how do you enforce a decision made by dispute body on the domain? It’s very easy because when you register the domain name in specific zone, which where UDRP are applicable. it means that you already by buying or paying or renting this domain name, you already sign that if you infringe someone’s right, and there will be the center who decides not in your favor, then this domain will be taken from you. Therefore, since Ukraine is the part of UDRP, like UA DRP procedure. And not all the domain names are subject to UGRP. UA, com. ua, kiv. ua, they are subject, but there are certain domain names. For example, one of the most famous cities is Lviv. And there is also lots of domain names registered in this zone. Lviv. ua. But UDRP is not applicable, so you cannot go according to this procedure and if you want to go against the disputed domain name, you need to file the claim with the court. But If there is a procedure, this UJP procedure, so you can go with the center and it means that it’ll be automatically enforceable. Ah, okay. So after the, don’t even get involved. No. After the decision is issued there are another 10 days, for example, respondent wanted somehow to. claim or go to the court, but normally it’s not possible. Then after 10 days, it’s automatically transferred or canceled. I see in general, it became more popular because of the COVID, because everything went digital. And there were Everything you could buy only online. Since online presence was really surged, then this remote work and e commerce growth it was also one of the reasons that domain name dispute became more popular it was expected, of course, but since 2020, it became more interesting. And now one of the most famous domain name zones which is very often where the many domain name cases are. Can you guess which one? In the Ukraine you mean or in No, in general. In general. Worldwide. You mean where most domain name disputes are? Yeah, so the mo the most infringers, so of course it’s not applied to DE because you are not the part of UGRP, so unfortunately in Oh we are not, oh yeah, you are not . So I would’ve thought that it’s maybe.com and then that’s the United States, but I seem to remember that they’re some nation states who have really convenient endings, like, for example, Tuvalu has like tv. I remember reading about that. Oh, really? Is that it? Yeah. But it’s not, still com and also co, which stands for Columbia, but it’s when some, but also one of the most famous now is ai. And it’s not related to artificial intelligence. It is related to one small country, which is Antigua. I’m not sure if I’m spelling that. Yeah. But all the businesses that are doing AI now, they want to register their domain name in this in this domain name zone. So now I think that there are like 60 cases per year, although a few years ago, there was just one case in a year. With the WIPO dispute resolution mechanism, or do they have their own? No, they have WIPO and they fall under UDRP. Do you know the economics behind domain? registrations because I seem to remember that some of them are really expensive and can cost hundreds of thousands or millions. Who decides on the price? Is that the market? They put it on the market and the more people want it, the higher up it goes? I think it depends registration of a domain name, if you want to record it’s really. Very low amount of money you can spend, but if there are some who are really working in this industry and who know that some of the company soon is coming with a new product and they already know the name of this product and therefore Those people are trying to register the domain name and then to sell it it is more brand related So technically it’s very easy and technically it doesn’t cost lots of money because it’s just a domain name. It’s not the website. The website is a domain name then redirect you to the website, but the domain name is just this name, which you can type. But the economy really is related mainly to the brand itself. And the brand costs lots of money, then the domain name can also do that. You probably are aware of NPEs of non practicing entities with patents. It’s companies that buy our patents and then hope people will use them and then charge fees or make them get a license. Do you think those exist with domain names as well? Or you just register like a million names and then just hope somebody will need it? And then you can make a bank off of them? Yes, that was the same actual situation with the trademarks. There was the good example that we had one bad actor. When Ukraine became independent, that guy. He registered 400, 500 really famous trademarks because those companies just didn’t have the time to make those registration. And then he was selling those trademarks to the real players, to the real companies. In the domain name industry and in the trademark industry the rule is the same first come first serve. I don’t want to name the client, but they’re actually also from Germany and they are very famous. producers of sport products. And they told me we have those infringing domain names, like hundreds of them. But we want to deal only against those who are selling counterfeit because all our budget for from all of our department, we will just spend on the, fighting against the main names. But if we see that this domain name is used in bad faith. So there are counterfeit products. Then we definitely go against that domain name because we know that this is infringing our rights. Just a question that just arose and I think there’s hardly anyone better placed to answer this than you because you’re on both sides. Is it difficult to file those domain name disputes as a lawyer? Because you can just say, Hey they’re a bad actor. And then the judge or the arbitrator has to gather the facts and they usually knowledgeable and they will be able to figure it out. Or is there a strong burden on the lawyer to figure out and prove the bad faith and all of that? I saw a few complaints that was written by in house lawyers. And they were quite bad. In terms of the terminology, in terms of everything, in terms of elements, in terms of evidence If you want to go I would definitely ask my colleagues, for example, to file the domain name in the U. S. Because there is quite some specific which I cannot be aware of. I had the case from very famous companies who filed the domain name complaint. It was absolutely clear that it is written by some junior associate because the company was as I told you, multi practice with many offices around the world, and it was very poorly drafted and I was even about to refuse in the domain name because, for example, in the second element no right or legitimate interest, it was only one sentence. The respondent has no rights and legitimate interests, dot, without any evidence, without nothing, some major players, they are so confident about their name and about that they are right, that they don’t work properly on the document. And that for me was really the sign that something really was bad, that day when the complaint was filed. So I would say you just need to be matured. In trademarks, mainly, if you have a domain name practice and experience, that’s great. If not, you just need to read all the rules, all the policies, very careful. And then you can do that. But you really need to prepare at least if you try, if you file it for the first time in your life, you need to put some efforts. Is there any appeal procedure or is it once you decide there’s no going back? There is no appeal, but you are allowed then to go to your local court So if the supposed owner goes to the WIPO, the disparity resolution system, they cannot challenge this by a court afterwards. There is actually the possibility to challenge that, but. Okay. And I think that we will be discussing that in April next year when we will celebrate 25 years of UDRP in Geneva. Officially you can appeal it somehow, but there is no procedure how you can do that. Ukrainian local court, if someone comes to you and say we have this procedure we, what you would like to appeal? Because they don’t have this, There is some decision of some arbitration center. There is no procedure how to challenge it. And and we actually had this case with Michael Kors. I was the panelist who made the decision in favor of complainant Michael Kors in Ukraine. And that was obvious that there was something that there was a bad registration of a domain name. The respondent, tried to challenge the decision and she applied to the local court, but the court said formally we cannot do anything with this because this is just something we cannot deal with. So nothing was decided. Therefore this type of thing normally doesn’t really work Again you can register other domain name Which will not be infringing the rights of other people you can still sell for example something I don’t know if there is if the country allows great import you can sell those great imported products But what’s great import? Great import is when you are importing some products, but you are not the authorized importer. So you’re still allowed to import, let’s say some coffee, Lovatsa coffee, but Lovatsa has their own distribution channel and they cannot prohibit you to import this coffee to the country because there is no, for example, in Ukraine, there is no infringement of the trademark. If you are just importing. If you are importing the product without using a trademark in other way, like in domain name. So you can still have like coffee shop dot UA,. Yeah. And you can sell that the products of Lovato you can be unauthorized distributor. You just need to be careful with our, with not infringing other rights. How to advertise the, those products, but in terms of the domain name, it is very clear that you’re not allowed to use other parties registered trademark in this, in the domain name. When you render a decision, do you guys discuss the case or do you have one person who’s in charge of an individual case and that person decides? It can be only one panelist or three panelists. And I was the one, and there was also only one decision that I made. And there was, Okay. Honestly, this is one of my favorite decisions because it was when the war started and I was issuing this decision in the shelter. And then my picture from this shelter was circulated in LinkedIn because it was she’s still working when the war is going on, but that was, the best distraction ever, because all the news were about the war, and the best distraction was to work, not to stop because, you need to be always still try to find some good things because otherwise you will be done. And this is something that our enemies want, so we will not make it happen. You’re certainly a force for good and keeping up the process. So that’s a great share that you contribute to the country. It’s awesome. Do you work from Kiev then? Yeah, so now I’m living in two countries. I’m living actually in Germany in Potsdam. And yes, and in Kiev. So I’m there and there. The whole family is in Kiev and we are also there very often. Now I’m in Germany because I’m going soon to New Orleans for the interleadership, so it’s better to go from Europe than from Kiev because it takes a lot of time to get from Ukraine because flights are not possible. If you go to any, I don’t know how busy you will be, if you go to any bar, there’s a great. There’s like a famous cocktail artist, like who, who revived the cheeky cocktail era and made many of the today’s cocktails like the real zombie and the Persian Polynesian pearl diver and lots of others. He’s in the French quarter. I think it’s latitude, I believe it’s called and Beach Bum Berry. So if that’s one of the greatest bars in the world, if you do have some time, you should check it out. Maybe it’s a different number, but something like latitude, if you, but if you Google Beach Bum Berry. You’ll find it. That’s interesting. That’s interesting information. I studied a lot of tiki cocktail culture for some unnecessary reason, just because I thought it was, it sounded really interesting. And because it’s complicated and I don’t know, it’s, it reminded me a bit of IP as well, because I always think about, can recipes be patented or trademarks. And I still don’t really know if it can be patented. I think it depends if you use something of the substance. Yeah. If you, I think it’s not enough if you just put a few different alcohols together, but if you have a certain process or certainly like molecular gastronomy. Or mixology might do that he has a blog and he explains how he actually researched the ingredients. Like a historian, he’s a tiki historian. It’s very interesting stories, but, don’t want to sidetrack us, but if you’re go into New York, new Orleans, that’s maybe something you could check out. Thank you for the tip. Oh yes. But awesome. I’ve never been there. Yeah. Oh, cool. And I think they also have, civil law partially in Louisiana because it used to be French and the US bought it from them. It’s not quite like the rest of the country in terms of legal system. I think they might have some civil law down there. Interesting. All right. I was just going to Relay one story because when you told me that you wanted to do domain name disputes I didn’t know anything about it. There was only one instance that immediately came to mind. About five years ago, I listened to a podcast episode from a show that I sometimes listen to called the Tim Ferriss Show. And they had the founder of Dropbox on as a guest. And the guy’s called Drew Houston. And he actually spoke of a domain name dispute that I found so awesome that I actually went back yesterday and tried to find it and listen to it. To remind myself of the story because it’s such a crazy story that also illustrates how important these conflicts are. Dropbox. is probably pretty well known now. It’s a multi billion dollar company from the U S and you can store your files online. It’s a bit like G drive, like Google drive, but it works really well. And it’s integrated in lots of services and it used to be called get dropbox. com. Because they couldn’t get the Dropbox domain name. How Drew came up with the idea was that they used to go and make a LAN party. So local area network parties where they go to someone’s house and they bring their computer and then they set up a local area network and then they game together. And sometimes people were missing certain patches or certain data in order to play correctly. And so they would put, they make one folder that they call Dropbox, where you could put all the patches and all the files in order for people to play the game. And so he initially wanted to call it, I believe, folder anywhere com. com. com. There was a site, but it was a bit, not that genius. And there was also a company called Files Anywhere, no, Files Anywhere. com. And so he thought that might not be a good idea. And so he was chatting with a friend and he said, ah, I think I’m going to call it Dropbox. And the friend was like, yeah, whatever. And and then, so he, and then he was gonna get, go get Dropbox. com. It was already taken. And so apparently you can sometimes look up who owns. The domain names. And he then called the guy and it was like some dude. And he said, yeah, he asked me are you using that domain name? And he said, yeah, I’m actually using it for a project. Do you want to get, do you want to sell it or do you want to get to some kind of arrangement? And the guy was like, no. And said, all right, whatever. And so then they forgot about it. And then he had developed the company. Yeah. He went to Y Combinator, which is a startup incubator that helps startups scale. They have, for example, Airbnb, Stripe, Coinbase, and DoorDash. They’ve all been funded by them. So they, have a huge track record. And Drew didn’t want to change the name. And so they forgot about it and just started building their company. And at some point they were like, Hey, We should really get that domain name. And so they had a co founder by now. And that was in 2007. And he was calling the guy again. Hey, how’s that project going? You’re doing yeah. Hey, you want to sell your domain name? Nah. And then those guys got really nervous and they moved to. San Francisco. And so they had VC funding by this point. From Sequoia capital, which is one of the largest VC funds in the world. They were putting in, tons of money, millions, but they didn’t have the domain name and the founders were like, yeah, whatever, we get it. So we just get drop, get Dropbox for now. The VCs really put pressure on Drew and his co founder. And yeah, dude, we got to do something. And then they actually took a cab and went to his house, to the guy’s house. And I thought, What was the worst that could happen? So they thought, Hey, maybe we should, Not just barge in and just get some champagne. So they went to a corner store and bought a bottle of cheap champagne. And they knocked on his door and it was like 9 p. m. The guy opens up, he’s a bit shocked but drinks the champagne. And so they’re like, so how’s your project going? And he’s yeah, it’s all right. So yeah, we got funding from Sequoia Capital. So we want to get this over with. And so I really need that domain, and he’s I can talk to a friend and I’ll be in touch next week. All right. And they were like super ecstatic. And it’s awesome. Then on Monday he called them, yeah, I thought about it. No, thanks. And hung up. Dude. Okay. Then they still forgot about it and they just use get Dropbox. Then the problem was, and this is where something of this comes in, what you were talking about. Then he didn’t just not use it, but then he put on that, all the people who were using Dropbox beta, the test version. They all, of course, went to Dropbox. com first, and he put up a landing page with Google AdWords and was actually cashing in on the brand name. And not only that, but he put on. AdWords, for their competitors. So it was actively hurting their business. And then the funny thing is, Drew explained and so the way how we’ve fixed it was actually the federal copyright and free mark code, and I looked that up. So the Fremark code doesn’t exist so what he would have looked up, in 2007 or 8, at that point, was the Any Cybersquatting Consumer Protection Act, ACPA. Which apparently is an amendment to the U. S. Trademarks Act, and it has nothing to do with copyright law. But the funny thing is, he said Fremark, and I know they have service marks in the U. S., which is like a trademark. Yeah. And I thought Fremark is maybe something else and it doesn’t exist. Because he’s a computer programmer. It’s a coding tool, like an engine for Java, but it’s funny that he said Oh yeah, I found it on the copyright and Fremark code and that’s the solution, but it goes right around what you said so they would have used the ACPA and the uniform domain name dispute resolution policy, the UDRP, either one. He doesn’t go into detail. But he did say it’s illegal to intentionally confuse customers. And they also didn’t drew, didn’t register the Dropbox trademark, which didn’t help. But eventually they were so angry that they threatened to sue. That guy, and then that got his attention finally. And he said, yeah, all right, let’s settle. And they say, okay and they finally, they settled and said, okay, we’ll pay you 300, 000 or stock. And the guy said, I’m going to take money. And so he took 300, 000 and for nothing, just for being a difficult person. No, he was first. He was first. His first come first serve. So he was more, into that. So he was, but He, I think what would have broken his neck is that he was trying to then use their brand. The funny thing is, if he would’ve taken that stock, that was in the seed stage, that would’ve been worth several hundred million dollars if he would’ve taken that. That’s how powerful domain names are, and that is crazy. So that’s just a story. I’ll, yes it’s, and I remember that from five years ago. I will put in the show notes. By the way, anything you would like people to listen to or to watch or read. Just send it to me and I will put it in the show notes. I’ll also put in the original lip of that story because he tells it really nicely. But yes, so that’s just one thing to illustrate how important that is. I thought, yeah, great story. Really. Thanks for sharing. It’s a fun, it’s a lot. Everything comes from those. Kind of stories where you can finally get your lessons. So if you would have the trademark registration that guy who registered first with my name. He would even had more and at the same time with the company with the Dropbox itself. So if they had the domain name registered or if they even took it when they started to be interested in that domain name, it will also not be that difficult it happened in the in the forthcoming years. So yes, you need to be prepared. Yes, that’s very true. are there any other cases that you’ve done, because you’ve obviously done much more than domain name stuff, that you would like to talk about that were formative or that you really enjoyed doing? Oh It’s difficult to to take one of the cases from the whole experience, but the first thing that comes to my mind is the case that we are handling for the third year. And this case, it actually involves a few different infringements. So we were dealing about one of the guys who was a very famous counterfeiter of coffee. One of our clients who is the famous German producer of coffee. The company found out that there is the coffee, which is sold on the local market, but this is not the original one. And there is not only. that coffee, but also some other packages of coffee, which looks similar. When we took this case, we found out that this bad actor, registered the design infringing the rights of the clients. He registered two copyrights because in Ukraine, it is possible to register a copyright. And he also registered the trademark. Which had the famous facade of the building of our client, because the client is very a long time on the market. From one case, we came to a few cases, because we had to challenge two copyright certificates, one design. patent because at that time we still had the patents for the design now we have design certificate and the trademark kit which is still going on but we already won three cases now we’re still in the court and next week on thursday we will have one of them i hope that it will be final court session. Again, that guy in terms of the trademark cancellation, because it’s already the appeal court. I hope that we will finally come to the end, but this is really an interest in how the infringer was prepared. And when we had declined in Ukraine, it was, it started before the war. And he saw two packages. One of them was not real, was counterfeit. And he was like, Looking at those two packages of coffee and he was like I don’t know what is real and what is not and At the end because both of them has really good quality the paper is also good and even it comes out it came out that The package of the counterfeit product, the fake product was even better in terms of the quality than the real one because it was a lot of gold, but the thing was that on that package. There was information written in German and there was one letter missed in one of the words. So in, in Deutsch. So and that was the only possibility to see what is fake and what is the real product. But so this is one of those, so in that case, it wouldn’t be the same cases, they would be split, even though it’s split, yes, because there was a separate subject. So if you want to challenge yet, so if you want to cancel one of the object it’s it’s a little different. Interesting. And I read on your page that you also are involved in art law. Is that still correct? What exactly is that? My love into art law came from my passion, because I’m also painting. I did art law course at Sotheby’s Academy in London. Art law is super small niche right now I was speaking to one of the famous Ukrainian art dealers and we tried to evaluate the market we had lots of figures and we came to the conclusion that Ukrainian art law market is 0. So it’s, super, super small in terms of the art law. Art law deals with everything around artistic work. So it’s creation, protection, and sale. The issues include copyright, which protects artists rights to their creation, all regulations that protect cultural heritage, restitution of stolen and looted art, import and export rules for artworks, all of that, all related. And since normally there are not so many cases about art law mainly the one whose rights are infringed are artists. And normally artists don’t have lots of money, even if their works are used somewhere in advertisement or in clothes, they not often enforce their rights. When we do this work, we often try to help them and we do some work pro bono. For example, we helped to register one of the famous artists of his mural I’m into art law, since 2018 when I had those art law study in London. After that I develop this practice in Ukraine. Now I work with the main art dealers and very famous sculpturists and painters. Also, I’m one of the authors of the Art Law Guide. We are the only one company from Ukraine that delivered the material about art law. It’s interesting field, but also not really developed because again Art law is very popular in New York. I mean in the US. So because there are three big markets uk us and asia and therefore in those regions. They are more or less. Better in art law or for example in europe also italy They have lots of rules germany sometimes Even I saw my colleagues from hungary You But we are still, this is still not very developed, although lots of fun, lots of impressions, lots of something that really helps you to deal with difficulties of this world. You have the chance to influence how art law is practiced as well, because if you are one of the main people who educate on art law, then you can shape it as well. So it’s not like it’s a huge market that has been there for many years, but you’re still in the process of designing it a bit as it were. So that’s also very exciting. Yes. And I was the lecturer of art business schools for a few years, when the COVID started. So everything went digitally and there was a big demand for art law. Since there were many courses, how to deal with art, how to be the art manager, and of course those people just knew how to paint or how to make exhibitions, but they didn’t have a clue how to protect their rights. And how to make necessary contracts with art people and so making the exhibition is good, but also you need to have the legal background for that. You need to have a certain agreement because there might be someone who is responsible for the works that are sold or that are showed to the public. That was also very interesting experience. But nowadays I would say that art law, at least in Ukraine, is not that much developed right now because we are focused on other issues. Sure. But it’s nice to have things, as you said, that to focus on that make life a bit more pleasurable. Exactly. Exactly. Wonderful. Oh yeah. So maybe then just a few quick fire questions. What would you say is your favorite painting? If you’re an art lawyer, do you, you must have favorite painting Yeah. Or favorite work of art? I like Kandinsky and I also have the poster. I am not able to buy a real Kandinsky, but I have a poster here on my wall because he is the artist who really knows. what the shape is and what the color is and how to combine them. When I started to be into art and before even I thought it how to paint, I was mainly focused on the, masters from Like Rembrandt. All those school, then I switched to impressionist. Then it was post impressionist. But when you are for a long time into some subject and you try to understand what is art about, how, what is the difference between art and decoration, how to understand, And I started to understand that when you look at art, it’s not just, I would like to have this painting on my wall. It’s not about that. It is about the author itself. It is about at what circumstances he was growing, how he came to that, what was the historical period and why did that painting is that much important? Why the Picasso paintings are so much interesting right now? And what was before Picasso? So why Kandinsky painted the way he was? So it’s more than just look at the picture and say, I like it. Nowadays. I don’t perceive the art from the point. I like it or not, because even in the painting or in this culture, there is something which when you look at it, you feel some disgust, because modern art is also often about some disgust because they want to challenge your emotions. Yeah, they want to challenge you. So then you become more interested. So this is about art is because decoration, you have many things for decoration, but normally you don’t have those feelings. When my boyfriend recently showed to me some painting he would like to buy, I told him I don’t feel anything. It’s really painted okay, but I don’t feel anything. And I, so this is just the decor and this is not the way I look into art. Art is much more and yeah yeah if you can then maybe later send me the name of the work and then I can also put it in the show notes so people can understand what maybe, or maybe feel their, have their own emotional response. Great. I will do that. All right. And best book you’ve read recently. Oh, I recently read a really fantastic book, which I which I liked, Lessons of Chemistry. That was that was really great to read because it was, first of all, it was in English finally because I often read in Ukrainian and I often read professional books, all, I think that all lawyers do there’s some commentaries to the codes or whatever, but that was. Lessons of chemistry and there is also a series, a movie about that. But that was about the woman who loved chemistry so much and she found a way how to involve other people to be interested in chemistry because she started to have her show, her cooking show. And then he showed how to make how to cook with the background of what chemistry is about, how you can mix the things and why it is necessary to do that. So there are really there are lots of good things about this book and what it can show and what other feelings they can produce. It’s also about the woman in 1670s years of the last century when women were not that free in terms of where to work. And so this is also about the freedom of speech of women. So lots of Great thoughts you can have from that book. So I would definitely recommend it. And I think that everyone will enjoy it. All right. And finally your advice to young lawyers, what would you recommend a lawyer that’s just starting out? What’s important? What maybe is overlooked too often? Oh, interesting question, I think. Let’s put it very simple. Okay. If you want to be good into what you do your work good or don’t do it at all, because you will achieve some great results only if you put effort. Otherwise, just be lazy. Don’t waste your time. Maybe it’s just not yours. Wonderful. Those are great parting words. That is super helpful. Thank you so much for this wonderful conversation, Ganna. Thank you so much. That was very interesting. Also for me. For me as well. And I think people will have learned a lot. Hope hopefully it will be interesting for not only for us. I think people will really enjoy it. Yeah, definitely. Okay. So have a nice night. You too. Yeah. You as well. All right. Take care. Bye bye. Yes. Bye bye. Thanks so much for tuning in today. If you enjoyed this episode of IP Talks, be sure to check out our other episodes and subscribe to the podcast on your favorite platform, whether it’s Apple Podcasts, Spotify, Google Podcasts, or wherever you listen, and don’t forget to follow us for updates and new releases. We really appreciate your support and we’ll catch you in the next one. Bye.

9. 

   1 Nov 2024

   #5 – Chinese Patent Linkage and Trade Secret Litigation (Benjamin Bai – Season 1 – Episode 5)

   Summary Key Discussion Points: Exploration of Patent Linkage: Learn about complex IP concepts, such as China’s patent linkage system, which aligns with international frameworks but adapts to China’s unique regulatory landscape. Trade Secret Litigation Trends: The podcast highlights recent developments in China’s trade secret laws, discussing landmark cases, the role of local and international regulations, and methods to safeguard sensitive business information. Understanding Cross-Cultural IP Practice: IP Talks provides guidance for Western legal practitioners working with Chinese clients, emphasizing cultural sensitivity and strategic communication for effective partnerships in the Chinese legal environment. Time stamps 00:00 Introduction and Disclaimer 00:34 Meet Benjamin: Leading IP Practitioner in China 01:40 Benjamin’s Career Journey 12:33 Understanding Patent Linkage in China 20:56 Recent Developments in Trade Secret Litigation 32:19 China’s Role in the Global IP Community 39:46 Final Thoughts and Farewell Show notes Building a robust trade secret strategy in China (https://www.iam-media.com/guide/global-life-sciences/2024/article/building-robust-trade-secret-strategy-in-china (https://www.iam-media.com/guide/global-life-sciences/2024/article/building-robust-trade-secret-strategy-in-china)) Transcript Disclaimer, the views, opinions, and statements expressed by the hosts and guests on this podcast are entirely their own and do not represent or reflect the views of their employers or any affiliated organizations. Additionally, the content shared on this podcast is for informational purposes only. and does not constitute legal advice. For any legal matters, listeners should consult a qualified attorney or legal professional to receive advice tailored to their specific situation. IP Talks is a Jan Willem Prugel production, all rights reserved. Hello. My guest today is Benjamin by one of China’s. China’s leading IP practitioners with their on 30 years of experience. He’s a partner at the international law firm, king and wood. Mallesons in their. Shanghai office. Benjamin focuses on high stake. Steak intellectual property disputes involving complex patents. Trade secrets, trademarks and copyrights. As well. Well as unfair competition and antitrust claims. He has. Served clients from a wide range of industries, including pharmaceuticals. Chemistry semiconductors communications, manufacturing, biochem. Biochemistry and FinTech. In the past, he has been voted. One of the most influential IP people in the world. By managing IP intellectual property and he was named the winner. Winner of China IP, lawyer of the year award by. China law and practice. Benjamin has also been an IP star for the categories, patent licensing protection and litigation and trade secrets. Before KWM he was a partner at Jones day. And. Elena and ovary. In this episode, we talk about Benjamin’s rise. Rise to become one of the most seasoned IP litigators in his country. On a more technical front. We cover the current state of patent. Linkage in China. Patent linkage something that many European appealers. Laura’s may not be familiar with, but which plays a large role. In both China and the U S and is this something that’s good to know about? We also talk about the recent developments of trade secret litigation. And China, an area that is increasingly becoming more important for economies. Enemies. And we’re Benjamin is one of the leading experts. Finally. Finally, we discuss typical misunderstandings of Western lawyers when. I’m dealing with Chinese clients and what Chinese IP policy developments, Benjamin. And expects in the next years. This conversation really was a great. Pleasure. Not just because Benjamin is great. Discussion partner, but also because he. Gives out so much valuable information freely. And took some of his valuable. Time to be on the show. So without further ado, please enjoy this episode with. Welcome to IP Talks, the world’s greatest private podcast on all things intellectual property, starring some of the world’s leading IP practitioners and your host, Jan Willem Prügel. You’re in for a treat. Enjoy. Perfect. All right. How are you doing today? I’m doing good. I’m doing good. Benjamin, thank you so much for coming here today. And I would like to go straight into the topic. What I would first be interested in is how you originally got into IP law because I’d seen in your biography that you actually started your academic career with chemistry. Yes. I went to the U. S. to study chemistry and got a Ph. D. During the process, our lab was applying for a patent. So that was the first time I heard about such thing as patent lawyers, and I saw a couple patent lawyers coming to the lab, talking to my colleagues, and we applied for a patent. That idea. of becoming a patent lawyer one day started to crystallize in my head. After my PhD, I went to work for General Electric for About a year then I decided to pursue a law, legal career, so went to law school and this is how I got into, got into patent law. Very interesting. Could you specialize in IP law already in law school or did that come later at a law firm? U. S. law schools teach basically general law, but there’s always one or two courses on patent IP law or patent law and I knew at the time I want to be a patent lawyer. So I didn’t focus on anything else except IP law. And when I got out of law school, I joined Fisher Richardson, that’s a IP boutique firm focusing on pretty much patents, patent drafting. Patent prosecution and some litigation. That’s the kind of work I did early on in my career. I see. Were there any, did you were there any people in your circle of friends or in your family who had done something similar or was it something that you always pursued single mindedly because you just found that’s the right way for you? There’s no lawyer in my family. However you define my family, I can’t think of anyone as a lawyer. So this really was inspired by this patent lawyer who showed up in our lab and I thought that’s a possible career path. And lo and behold, now I’ve been in this field for about 27 years and never regretted a single day. I enjoy doing this. I love the work I do. Could you sketch your career a bit for us? Because as you said, it’s it’s, you have a lot of experience. A friend of ours, a mutual friend, Doug Clark, who mentioned me mentioned you to me said that you’re one of the most experienced and best patent litigators in China. Who better to ask than to maybe sketch out what a good or what your career might be? Looked like and what the individual phases were. And did you ever have a certain goal where you wanted to go or what, how did you move one foot next to the other? That’s very kind for Doug to comment like that. And I appreciate it. And he was my opposing counsel in the Nokia Qualcomm litigation. He was representing Qualcomm. I was the lead counsel for Nokia. In China, and that’s how we got to know each other. We respect each other, and I respect the world of Doug. My career can be roughly divided into a seven year stage, seven year stages. All the first seven years I was in Houston, Texas, focusing on drafting U. S. patents. and prosecution and some patent litigation. Second seven year I moved from my the law firm to Jones Day in Houston, started focusing on IP litigation in China. on behalf of multinational companies. There I pretty much represented a lot of technology clients like Nokia, Apple, IBM, et cetera. About seven years later, I moved from Jones Day to Allen Overy. Focusing on IP litigation on, on, on behalf of multinational companies. There, I focus more on the life sciences clients, for example Novartis and Abbott being two prominent life sciences clients there. Then I took a detour after about seven years. I joined Ant Group, which is the parent company of Alipay. I was there for five and a half years, then I moved to a crypto company called Amber Group based in Singapore. I was the chief legal officer for Amber for a year. About a year ago, I returned back to private practice and joined the Shanghai office of King Wood Mallesons. So this is a short summary of my 27 years of IP experience. Very interesting and fascinating. Just because that’s the one I at least understand. What exactly did the Amber Group do or what was your role there? It was a crypto, it was a crypto wealth management company. So it had nothing to do with IP. I see. And I did that during that one year, I did basically I did non IP work and that reinforced my desire to focus on IP. I did non IP and I think I enjoy doing IP work more than IP work. I see. Very interesting. You also mentioned that you had many clients. Are there any Proceedings or any types of litigation that you enjoyed most that you look back on fondly that you’d like to share? Yes, a couple of pieces that come to mind. Most of which relate to getting, relates getting preliminary injunctions in China. For example, for Abbott. And for Novartis during that one year period, I was lucky enough to get two preliminary injunctions for Abbott on a design patent they had on the package of their milk powder formula, okay, baby formula. Yeah. And at about the same time, I was acting for Novartis in their Gleevec litigation. And we were able to get two preliminary injunctions against two Chinese generic companies who infringed their GleeVac it’s an indication patent. And we were able to get preliminary injunctions in both cases. And I can talk about those cases for a day or two. And I still remember it. We did it in about 2014 ish. So it’s really about 10 years ago, but the Gleevec case is still very fresh on my mind. Yeah. What is most memorable maybe about that case, would you say, for you? It’s the first preliminary injunction in China on an indication patent. But also, it’s against off label use, so those two, and as anywhere in the world that you try to push API against off label use, it’s always difficult. And we were able to do that. So this is why this is still memorable, even 10 years later. And there hasn’t been a lot of successes by big pharma anywhere in the world. You look at getting PI against off label. Have subsequent lawsuits or litigation used the tactics that you were able to use in that case? Has it become a standard practice or were you only able to do this and then no one else has come up and could copy it? In China, not all cases are reported. There’s not a centralized database. So it’s hard to know if there’s another case like that. But at least I’ve been asking practitioners in my circle, and no one said they are aware of a similar case. So the Gleevec case may still be the only off label PI. in China. And speaking of pharmaceutical cases and the problem, the problems that come with it and enforcing pharmaceutical patents in China. One of the topics that we would like to discuss today is the patent linkage litigation in China. And so first of all, maybe for, especially for our European listeners, what is patent linkage in general and very basically how does it work in China? Chinese patent linkage is modeled roughly after the U. S. Hatch Waxman litigation. There it’s about Staying regulatory approval for a certain amount of time and pending patent litigation. Not sure you have that in Europe. I think in Europe, people will just go for PI. If you get a PI. You’re good. In the old days before pattern linkage, PI was the only option, but it’s extremely hard to get. In China, you’ll, in IP cases, or patent cases, I should say, for patent cases, you probably don’t get more than 10, 20 PI per year for what’s called invention patterns. And for design patterns. It’s easier to determine infringement for for invention patents. It’s hard, but for drug cases infringement read is not difficult. It’s the other things that you need to be concerned, which is validity, irreparable harm, and the balancing competing interests and all that. Because getting PIs is always hard, and China adopted a patent linkage system about two years ago. The idea is you patentee register with NMPR in China. It stands for national medical products. administration. It’s the Chinese equivalent of FDA. So there is a registration platform where patentees innovator drug companies patent owners can register their patents and tell the authority that I have certain patents, so don’t approve infringing drugs. So first you register. And you say can, so is it, so it’s not mandatory to register? No, it’s not. Okay. Yeah. If you don’t register, then you don’t get the benefit of patent linkage. Okay. So I guess most people would register it then. Yeah. To my knowledge, a lot of innovator drug companies are utilizing this procedure. So first you register, then a generic, when they make a generic a drug application, then they have to declare, Oh, this is the, Oh, I’m infringing this patent, but this is invalid. Or I think maybe this is close, but I don’t infringe for these reasons. So they make various declarations. Okay. Then, once you get their declarations, you need to sue them within the time limit, and then the regulatory agency and MPA will stay the regulatory review for nine months. So basically it’s a very convenient way to get PI. I see. Yeah. So for nine months, you either litigate before the Chinese patent office, Or in the Beijing IP court, you have two choices. The administrative route, which is the Chinese patent office. Now the official name is National Intellectual Property Office, but in the old days it’s called SAIPO or the Chinese Patent Office. So you can litigate before the Chinese Patent Office or you can litigate before the court. The relevant court is the Beijing IP Court. So you have two choices. You initiate litigation regardless where you can’t do both and you just file litigation then the regulatory review gets stayed for nine months. And generally speaking, the cases get done in about nine months. So you stay for nine months. That’s the value of patent linkage. Very interesting. Yeah. Europe, as far as I’m aware, does not have it. And indeed the U S is known for it. Also, I think they use the they call it the orange book where all these cases. Okay. Yeah, matters are listed. Has there been, so I’ve, you mentioned, or I’ve read in some of your material that the Chinese courts have somehow changed their jurisdiction on patent linkage a bit, or they developed it in recent years. Could you give us a brief overview of how it developed? Yes. A path of linkage is a system that’s superimposed on the current court system, so it doesn’t replace the existing path of litigation options, so they just, it gives you the court system. A nine month stay if you go into the patent linkage, but the way Chinese Supreme Court interpreted patent linkage it is relatively narrow. Okay, first, you must have an eligible patent registered. If you did not register the equivalent of orange book listing, okay, you have to register your patent. First, second, the eligible patents can only be compound patent, formulation patent, and indication patents. Those are the three eligible patents for patent linkage. Whereas for At litigation, any patent can be asserted even metabolite patent and crystal patent, and things like that. So you have a wider array of options available outside of patent linkage, but if you rely on patent linkage, those are the three patents. you can rely on. And most importantly, you must have your innovative drugs being marketed in China. So there’s one reason Supreme Court case, which emphasized this principle that China wants new drugs being marketed in China. If you’re going to come to China asking for patent linkage relief, we want you to introduce your drugs in China. So if you only have a patent in China without having marketed the drug in China, then you’re not basically eligible for patent linkage relief. You can go into courts. For regular litigation, so patent linkage has been interpreted to be a narrow exception to the general litigation. I see. Very interesting. So the marketing requirement is jurist so it’s case law that’s not written in the regulations itself. No, it’s not written in the law, but there’s one Chinese Supreme Court which decided that. In China. Just like the German system, it’s not a case law country, but now Chinese Supreme Court starts to mandate like cases are decided similarly or in a likely manner, okay? So facts of similar facts, when you have cases with similar facts, then it should be decided the same way. So it’s following the common law principle to somewhat. No, it’s dead. Super interesting. Thank you so much for this overview of the patent linkage system, which is very unknown to most European patent litigators, I would think, or IP lawyers in general. Another topic that you thought of that we could talk about, which is really interesting is the recent developments in trade secret litigation in China. So first of all, how common would you say are trade secrets in China, for example, also compared to patents and how does this translate into the number of trade secret litigation proceedings and what sort of or what sort of information is typically protected by trade secrets? Trade secret law has been on the books in China for years. There’s just one article in the anti unfair competition law that defines what trade secret is. And the concept is similar to the European concept and also the U. S. concept. I think at the very high level, it’s about non public information, technical or operational information that has economic value. And the owner of trade secrets have taken measures to guard its secrecy, okay? So these requirements are similar, but in China, like the continental system, there is no disclosure or discovery tools. So if you sue for trade secret misappropriation, you have to have evidence. But trade secrets, by definition, sits behind someone’s door. It’s not available for public inspection. So this is why maybe trade secret misappropriation happens on a daily basis, but you don’t discover that. And what happens is sometimes is circumstantial evidence indicates something’s wrong. Then you go to court. For this reason. There are a lot less trade secret cases than patent cases. Let me give you some numbers. In 2023, there were about 44, 700 patent cases in China, first instance. Let me repeat, close to 45, 000 cases in the first instance, but there were only a couple of thousand trade secret cases. First instance, I’m talking about several cases. So huge difference. The reason being the burden of proof, unable to discover misappropriation, unable to prove it. In recent years, The Supreme Court has been articulating principles for the lower courts to reverse burden of proof. If you made some, I’m not necessarily saying that you made a prima facie case, because that could be a high burden. If there’s enough evidence to indicate something’s wrong. Then there are times judges will say, okay, since they don’t, the plaintiff does not have the direct evidence, but the direct evidence lies in you. So you come forward with that direct evidence to prove you didn’t do it. And sometimes they’ll do raids. Courts will do raid raids. Similar to the French CZ downgrades conducted by courts or reversal burden of proof, plus the willingness to award high damages, especially Punitive damages up to five times. Those are all recent progress that led to record setting damages were in a case called Golden Elephant on in that case, a trade secret damages award was given to handed it down. It’s about 14 15 million US dollars. That made history. Rightly yeah. Is punitive damages something that’s also fairly new in Chinese legislation, in Chinese law, or is that something that has always been part of it of Chinese law? For trade secret cases, it’s relatively new, but for patent cases, it’s been there for more than 10 years. So it’s a welcoming change in the trade, in trade secret cases. Now you can get up to five times of the the regular damages as punitive damages. Wow. I was wondering are there any is it common in China to have non compete clauses for leaving employees? So basically saying in their working work contracts, if you leave this company, you’re not allowed to work for a similar company or competitor within the next 18 months or something like this, because this would also possibly stifle any trade secret dissemination with new employers. Yes. Non compete is enforceable in China, but you have to pay for the non compete, and the amount is anywhere from a third to two thirds of your annual salary, pro rated. Yeah. So if you limit them to six months, then on a monthly basis you pay the prorated compensation. It’s either two thirds or one third of your normal compensation. So it’s not cheap. Think about if you have thousands of employees and that can get expensive. But that’s a remedy available. I see. Very interesting. You also wrote an article about the recent developments in trade secret litigation. And I would also afterwards include the link in the show notes so people can read it because it’s incredibly well written and very helpful also from a practical perspective. Then you also list various points and tips, how one can improve how, on how to safeguard, one’s trade secrets. And one of the tips you give or one of the Things to consider is that it’s important to build good relationships with the local police and also the Chinese government’s agencies such as the state administration for industry and commerce. How would one go about doing so in practice? To build relationship locally, you need to have local presence. Multinational companies operating in China, they need to build local relationship in the community they operate. Because why the police? Because trade secret misappropriation can be criminal. If you’re going to run to the police, of course, they need to know who you are. And so building relationship before things happen, it’s always helpful. In the old days, it’s called State Administration for Industry and Commerce, but now they’ve changed the name to State Administration for Market Regulation. But it’s the same kind of functions in terms of their, they’re able to do administrative enforcement of trade secret theft. So you have three ways to address a trade secret issue. You can go the criminal route, the civil route, or the administrative route. Administrative route, you go to state administration for market regulation the old AIC. These relationships can be very helpful if you have a case, but my advice is, do it before you have the case. And if you don’t have local presence, rely on local lawyers who have that kind of relationship. Very helpful. Good advice. You mentioned that criminal prosecution for trade secrets and I assume there’s also criminal prosecution for patent infringement. Both of these, at least as far as I know, exist, also exist for patent infringement in Germany, but it’s rarely used. How common would you say is going for criminal prosecution for trade secret or patent infringement in China? Thank you. The Chinese patent law is pretty much modeled after the German patent law, but unlike the German patent infringement itself is not criminal. Patents passing all of them. if you mark something which is not patented as patented, that’s called passing off. Sometimes people call it passing patent counterfeiting. Okay. These can be criminal, but for the regular patent infringement, it’s not. Oh, okay. Good to know. And so for trade secret infringement though can be criminal. Yes. Yes. You have to have economic laws. For it to be criminal, the threshold is 300, 000 RMB, which translates into about 43, 000. 43, 000 is not a lot of money, but it’s hard to prove. Why? Because if I just took your confidential information and went to a different company and if I’m using it internally, how do you prove economic loss? If I just started using it, I used it for a day, you need preliminary injunction, right? And that’s where PI can be really helpful. But sending this guy to jail also stops it. Yeah. But then at the moment it’s hard to prove economic loss. So even though. The threshold is not a lot of money. Even proving one dollar loss is difficult. Yeah, I see. And so if you ever if, criminal prosecution is initiated and any evidence comes up there. Can that evidence be for infringement? Can that evidence for trade secret infringement be used in civil proceedings for trade secret infringement as well? Yes. Yes. But initially when police does the investigation, they may not share with you, but once. They go into criminal prosecution, then whatever evidence they used in the criminal court proceeding, then you can get that and use it in a civil proceeding. So criminal cases can be a nice way to discover evidence. But the early stage of criminal investigation, the answer is no, because it’s confidential investigation. I see. Thank you so much. So finally I would just like to get your views on how you see China’s role in the global IP community in the coming years. That’s an excellent question. I see the world as there are three important Economic countries and regions, that’s United States, European Union, and China. China and the U. S. are single markets, okay? One injunction covers it all. Europe, it’s a little challenging, at least with UPC. One injunction covers 17 countries. And you still got, 20 plus some countries to worry about, but in terms of where to file patents, my advice to both multinational companies and Chinese companies, you got to file in these three regions. Of course, if you don’t have budget, then file in your own country. If you have extra budget, then I would say U. S. Or European EPO. And I had good discussions with German lawyers. If you’re, if you can’t afford European patent lease file in Germany. So Germany can be it can be done relatively cheaply, and also sometimes the German courts are much more willing to give preliminary injunctions. So I think if you look at the world in terms of GDP, market and return on investments, I really think those three countries and regions are important. And China’s very critical. Yes, no doubt. So it will be probably relevant. Do you think they will each try to find their own solutions to certain IP problems, or do you think they’ll all merge into having the same rules or is that. impossible to foresee. I think the world is merging, even though there’s enough anti globalization sentiments. But I think when it comes to IP protection, this is probably the only thing various countries can still agree on. Every country wants to have a strong IP system. China is no exception. You look at China 20 years ago, when it comes to friend litigation. It’s all, it was about trying to, not to pay royalties, but now tables have, the tables have turned. There are a lot of Chinese companies who own essential patents in 5G, even 6G, and Chinese companies are seeking to collect, friend royalties. And Chinese courts are more assertive. And they’re happy to determine a world trend rate, even though that gets up, gets a lot of other courts upset, especially in the U. S. But as Chinese companies become more of an IP owner, Chinese courts are going to be much more influential. Because the supply chain are still in China, and you look at the cell phone industry, the mobile communication industry, the entire supply chain is still in China. You look at the pharma market, it’s the second largest pharmaceutical market in the world. And Chinese companies are also developing new drugs. Although multinational farmers are still leading the pack, but you look at all the things happening in China, I just think China is a must win market for anyone with IP. And given that China’s importance in the IP space is ever growing many firms and many non Chinese firms also have clients in China and given that you are one of the most experienced IP litigators in China itself, what would you say or what would you say that non Chinese law firms often get wrong about the needs and expectations of Chinese clients, whereas there may be a cultural divide that they first need to overcome. Yes, I think the cultural differences are the most important and also fatal, okay? It’s fatal in the sense of communication, right? And oftentimes the communication is in English. and everyone speaks English with a varying degree of comfort. That’s one. Second is, you cannot just look at Chinese clients as one singular group. Let’s follow the 80 20 rule. And if you look at the United States, because there’s lesser of data for Europe and also UPC. But the bulk, I want to say a large number of Chinese companies or clients are still defaulting overseas, right? They don’t appear in courts. You cannot say that’s representative of Chinese companies because the 20 percent they litigate As if they were a multinational company, I don’t need to name names, but, they have the same strategy as Nokia, and they have the same strategy as, I’ll say, IBM, okay, Apple, they learn from the best, they also are working with the best lawyers around the world, and Chinese companies are known to be fee sensitive, but that doesn’t represent the everyone. When results count, they’re willing to spend money. And so I think we should be careful now to generalize. There’s certain certain clients are still defaulting, whereas others are you, they are becoming plaintiffs. There are plaintiffs in UPC. This was unthinkable in 1997 when I became a lawyer in the U. S. It’s unthinkable. Yeah, Chinese companies owning this much IP and also a certain their IP around the world. So in the old days, I think IP globalization was in large part driven by European and the U. S. companies. But I really think the next decades or so is going to be Chinese companies. Yes. And they will also probably push for some regulation and some ideas on how IP disputes should be. litigated and resolved which used to be only coming from maybe from the U S more. And now this, maybe the roles are also reversed in some ways. So yeah, it’s going to be very dynamic field indeed. Yeah. Thank you. Perfect. Thank you so much. Benjamin this was a fantastic discussion. Is there anything else you’d like to share or to have to say to the listeners or anything that they should check out in terms of IP litigation in China? There’s a lot still, there’s a lot to talk about, but I’m gonna be respectful of your time. That’s first, let me thank you for this wonderful discussion. And second is I cannot overstress. the importance of understanding China. I started doing cases in China 20 years ago. The misconception, it just won’t go away. And I still get asked the questions about, Oh, being a foreign company, do I get a fair shake in the court system? And they still ask the same question they asked me 20 years ago. So I think Things are changing rapidly in China and I think it’s time to really accept China as an integral part of the IP world and everyone should at least learn how to litigate in China and also how to work with Chinese clients. That’s a great final words. Then thank you so much take care. Have a great Sunday and talk to you soon. Yeah. Bye. Bye. Thanks so much for tuning in today. If you enjoyed this episode of IP Talks, be sure to check out our other episodes and subscribe to the podcast on your favorite platform, whether it’s Apple Podcasts, Spotify, Google Podcasts, or wherever you listen, and don’t forget to follow us for updates and new releases. We really appreciate your support and we’ll catch you in the next one. Bye.

10. 

    26 Oct 2024

    #4 – How AI and the War are Changing IP Law in Ukraine (Ilona Boliubash – Season 1 – Episode 4)

    Summary This comprehensive IP Talks episode with host Jan-Willem Prügel features an enlightening conversation with IP lawyer Ilona Boliubash, covering Ukraine’s transformative journey in intellectual property law amidst European integration and martial law. It explores the country’s adaptation to EU standards, the implications of recent political events, and legislative advancements such as the paused IP deadlines and AI-generated content regulation. The discussion also highlights Ilona’s academic insights on the nuances between common and civil law, the challenges faced by Ukrainian courts in patent litigation, and the innovative sui generis model protecting non-human-created works. Engaging and informative, this episode offers deep insights into Ukraine’s evolving IP landscape. 00:00 Introduction and Disclaimer 00:34 Meet Ilona: An IP Expert 01:42 Ilona’s Journey in IP Law 07:53 Ukraine’s EU Integration and IP Law 12:39 Impact of War on Ukraine’s IP System 16:31 Challenges in IP Litigation During Martial Law 25:45 The Future of IP Courts in Ukraine 29:44 Specialization of Judges in IP Cases 30:28 Discussing the Thesis Topic 31:01 Ukraine’s Progressive IP Legislation 31:53 AI-Generated Content Protection 33:33 Challenges and Future of AI in IP 34:54 Conclusion and Final Thoughts 45:30 Podcasting Journey and Inspirations 49:54 Closing Remarks and Farewell Transcript Disclaimer, the views, opinions, and statements expressed by the hosts and guests on this podcast are entirely their own and do not represent or reflect the views of their employers or any affiliated organizations. Additionally, the content shared on this podcast is for informational purposes only. and does not constitute legal advice. For any legal matters, listeners should consult a qualified attorney or legal professional to receive advice tailored to their specific situation. IP Talks is a Jan Willem Prugel production, all rights reserved. My guest today is Ilona. . Ilona is an experienced IP lawyer. She specializes in intellectual property litigation. With a focus on patents and trademarks. Our expertise also includes copyright AI regulations, UDR P. And GDPR compliance as well as data protection. She also takes an active part in developing the Ukrainian moot courts, society, and IP and public in the national law competitions. Last, but not least. She also works as a legal specialist at strengthening Ukraine’s EU integration together with a Ukrainian NGO. Also she’s a cheapening scholar, a prestigious scholarship awarded to exceptional individuals to conduct postgraduate work in the UK. In her case, doing an LLM and IP and information law, Kings college, London. I met Ilona when she was coaching the Ukrainian team at this year’s IP moot court in Oxford, where her team delivered a strong performance and received an award. She herself is also previous Jessup moody judge. And coach. In this episode, we talk about the recent political events in the Ukraine and how they have shaped their IP landscape and especially the IP court system. Additionally, we discuss illness, fascinating research and IP protection of AI produced material. And Ukraine’s revolutionary legislative approach to it. I learned a lot from this discussion. I hope you will as well. So please enjoy this episode with . W Bush. Welcome to IP Talks, the world’s greatest private podcast on all things intellectual property, starring some of the world’s leading IP practitioners and your host, Jan Willem Prügel. You’re in for a treat. Enjoy. Hello. How are you doing? Hi, I’m very good. And you? I’m fine as well. Thank you. Thank you so much for taking time on, on a Sunday. Thank you so much for offering me to be on your podcast. It’s very great. Yeah it’s a lot of fun. But yeah I’m, I’ve been very much looking forward to our discussion. Then Ilona, thank you so much for coming. And so I invited you because I know you’re from the Oxford IP moot court where you were also a coach for the Ukrainian team who did very well, if I remember correctly. Although I didn’t judge any of your rounds, I believe, but but it was great meeting you guys. And so just to get started, could you briefly introduce yourself and just talk a bit about how you got into IP in general and what you’ve been doing in that space so far? Yeah, of course. First of all, thank you very much for your invitation to the podcast. That’s been great to hear that you’re doing this. I’m an IP lawyer for six years now. I have been working mostly in IP litigation in courts. So I’m an attorney in Ukraine. The most cases that I’ve dealt with were concerning patents namely the pharmaceutical ones, so like medicinal products ones. Yeah, it’s been a very interesting journey in IP. And now I’m also at working at GIZ at their rule of law project, so trying to help Ukraine to approximate our legislation to the EU ones in the most fundamental rights fundamental issues, so to say. So yeah, and for the last year, I’ve been studying IP law at master’s program at King’s College London as a scholar from Ukraine. There is the Union Scholarship. That’s the UK scholarship, which is given for people from different countries. Yeah. And that’s been so great and so rewarding journey studying IPO law from the best professors you can ever imagine. To truly reveal my IP passion, in all the fields possible during this journey. Yeah. What were some of your highlights in your masters so far? Or what would you say you enjoyed most? Yeah, I think that I enjoyed the most studying about like how the whole system works, because when you are a national professional, you work with only one jurisdiction. And so you see only one side of the picture, which is your own country. But when you are studying the fundamental problems of AP law, you start to think about Why it works that way, not just how it works and how it’s written in legislation or in court practice by, but what are the reasons for it to work like that and studying in the UK, I think, is, has been very interesting in this regard, because we started to. both civil law approach and the common law approach. So when it’s all combined and you see how the system works in general, like what is the practice of different countries and why it is like that, you get the sense of IP law itself, like the nature of it, the spirit of IP law. So I think that has been the the biggest highlight, like understanding the fundamentals, how it works and why it works that way. And that can be, that knowledge can be very much useful when you are trying to think about how you can perfect your own system. They have different approaches and the aim of them, and you can make over something from your own system, which can be like more appropriate if it makes sense. Yeah. Yeah, very interesting. Would you say that common law, the common law approach and the civil law approach to IP law is fundamentally different, or does it only seem that way? And it’s actually just a different, maybe a different dress, but person underneath. The dress, so to speak, is the same, or is it fundamentally a different approach to the problems? Yeah, that’s a very good question. Because I was trying to figure out that myself, like for the last year, are they really that different? And from the first point, from the first site it seems that. Yes, they are different fundamentally in approaching it’s the most visible in copyright, I think because civil law countries, they tend to, wrap the author in all his glory and try to give all the rights that it deserves. can possibly even get, especially like the French approach, the German approach, Ukrainian approach is also following like that way of thinking about author. And common law countries, they are more concentrated on profits. Yeah. And so like more utilitarian purpose of copyright and all of the IP law, how it works. But I think that this fundamental like approach is only, It has only some contrast in copyright. With regard to other IP rights, they are pretty much the same. So yeah, only copyright is the most controversial one, I think, in this regard. Interesting. Very interesting. And so did I understand you correctly when you plan to return to the Ukraine and then also work together on a political level possibly to influence the legislation or is that something you’re interested in or what’s your take on that? Yeah, I’m very much interested in trying to help our country like approximating our practices and our legislation to the EU ones because we’re in a very active process of EU integration right now. We are already in the negotiation process. We will have like bilateral screenings on a lot of chapters of European Union. And that’s the thing that I would very much. want to do, like helping our governmental authorities to, to get into this process and through this process as effectively and efficiently as possible. So yeah, that’s basically what I’ve already started doing in one of the chapters, the rule of law, and I hope that more yet to come. Oh, very cool. Interesting. The main topic, that we’ll be talking about is how IP litigation functions. in Ukraine how it’s been functioning since the beginning of the war in 2022 as well. And maybe some of the problems that arise from that besides the obvious ones. So maybe to, to. Could you, for people who are less versed on the history of the Ukraine, maybe give a brief overview of what possibly so the role of the Ukraine in terms of approaching being part of more part of the European Union versus being torn between the European Union and being closer to Russia in the last few years, or maybe decades what went on there? Yeah it all started like our active EU integration process started in 2014, I think, with the Revolution of Dignity when our former president Yanukovych refused to sign the Association Agreement, which was to be signed very at that moment, it was a lot of preparations. to signing of that association agreement, but he refused to do that under Russian pressure. And that ignited a lot of protests and the biggest revolution that Ukraine has had, the revolution of dignity. People just couldn’t stand with a choice that we are not going into European family. I think that was the point when the Ukrainian society had to make the decision as to their, as to our own identity. And we decided that we are Europeans and we should actively move towards that through that way. And so after that the new government has signed the association agreement in 2017. And since then it has become it has a lot of norms, a lot of provisions on very different topics through all of the legislation. It’s actually based on and different chapters, but it’s not that strict, was not that strict in compliance because like we had to do the approximation steps. We had to comply with the association agreement, but only now we are implementing the EU legislation in whole. So only now we have started like the whole European integration process. Yeah it’s been going since 2017 very actively and The association agreement has the direct application in our legislation. So all of the provisions there, we have to comply with that. And of course, apply it as just as the provisions of the legislation. Yeah, I see. Okay. And so this has been a clear move towards the European union. And I’ve briefly tried to, to look at the history of private law in the Ukraine. What I found is that it’s somewhat similar to Germany and to France, I believe, right? That it looked a bit for to them for inspiration. Yeah, yeah. We are completely civil law country. So we do have a lot of, the structure of the legislation is very much resembling the European one. So that’s basically, it’s not that hard for us to implement the European provisions into our legislation because it’s already very close. And it has. the same fundamentals. And already we have the European Court of Human Rights, all the decisions, we comply with them. So it’s already part of our legislation. The only thing from the big European picture, I think, that is missing is the compliance with the CGEU decisions for now. They are not obligatory for us. Yet, however, we are moving in that direction. And so to join the European Union and to be obliged by all of the decisions of the CGU as well. I see. And how exactly? And then of course the invasion happened in, in early 2022. And apart from the disruption of general public life through military actions, what has been the impact on the legal system as such, and in particular in the IP space? On the first day of the invasion the president established the martial law in Ukraine. Martial law is is the legal instrument which allows to restrict a lot of constitutional rights. And also to give some additional powers to military administrations all over Ukraine. So that’s just that we can handle the war more effectively, so to say. Yeah. The martial law has imposed a lot of restrictions on rights of the persons and of course the circumstances of the war. They have led to Inability of a lot of people to just execute their rights and also in IP sphere as well, like with regard to their IP rights objects. And so seeing the situation, the Ukrainian government has responded to that. They drafted the law and the parliament has adopted it in the middle of April. And so that law is is called the law of Ukraine and protection of interest of persons in the sphere of intellectual property during martial law imposed in connection with the armed aggression of the Russian Federation against Ukraine. And so this law basically says that all of the Terms and deadlines, which are established for prosecution. So for for protection of your IP rights are suspended for the term of the martial law. That means that for instance, if you’re a person who who is on the occupied territories and you basically like, do not have access to any of online registers, or you cannot just file files, the motion for prolonging the term of your IP, right? Like for renewing the term for trademark or for patent, like to pay the fee for the next year of protection, all of your rights. are all of the terms are paused until the end of the martial law. And you, of course, no one knows when that will be. Yeah, of course. Yeah. Unfortunately. Yeah for now, it has been prolonged until November, 2024. It is renewed every three months. It’s written in our legislation that martial law can only be established for 90 days. So every time we have to prolong it for another three months. So now it’s for November 24, but of course is likely to be prolonged even more. And so all of the IP rights are basically now protected still two years now. So that if you cannot renew your IP rights, it is stated in the law that you do not need lose it you still have the right and you have the the right to file the oppositions to appeal anything to the appeal chamber and all of the other acts which are envisaged in that law. It’s very short by the way, it’s like only two or three provisions. And so it’s just aimed at protecting those two. people who have suffered from the invasion and who do not have the possibility to do the actions for protection of their AP rights. And so that has been a very good and timely response to what was happening because there were a lot of concerns that the people would just miss the deadlines for protection of their AP rights for renewal of the And so that they will lose their rights. And that was just wrong to to allow that to to become the reality. So fortunately we have that legislation and everything is prolonged until the martial law. And has that led to any complications in the proceedings that were going on, or has it been adopted rather well and led to easier practical enforcement of patent rights or IP rights in general? Yeah, I think that for the IP objects, which do not require anything like complicated actions just to renew them, that law has been doing well, I think, and it’s just for effective protection of those objects. However, there is one controversial Provision in that legislation which was interpreted by our courts, very formalistically, and I’m talking about the objects which are due to expire at all, so for instance, patents, they have the term of protection, which is established in the legislation. That’s 20 years. And if there is some supplementary protection, if it’s if it’s concerning the medicinal product, then it can be 20 plus years up to 25 years. And so that term, it cannot be renewed at all. So they expire on the dates. which is established by law. It’s only the very limited term of protection. They cannot be renewed because that’s the patent monopoly and it has some, sense in it. And so the law says it’s like very vaguely I will read it to you. The valid IP rights, the validity of which expires on the day of imposition of the martial law in Ukraine or during the martial law, shall remain valid until expiry or cancellation of the martial law. And so this provision, if to interpret it in the in the spirit of this law, just to protect the interests of people who are not able to renew their rights or to pay fees for the next year. It’s obvious that in the spirit of this law, this sentence only concerns those IP rights, which can be prolonged. It should not concern the IP rights, which cannot be prolonged at all. So if you have a patent, which expires in April, 2022, you should not have the right to prolong it, and it should not be considered as such. Do not prolong until the end of the martial law because it has expired. It has exhausted itself. This is right. However, our courts have been interpreting it in a very formalistic way. And so the first and the bill instances, which considered the cases which were concerning the validity of the patents, they said that the law says what it says. And so the patents are are prolonged until the cancellation of the martial law. So for now, some of the patents have already like 27 years of protection. But yeah, they’re going into their 28th year of protection and Ukrainian professional community in IP sphere, they condemn this approach very much because it just shouldn’t work that way in a country which has rule of law principles and some legal determination and all of that. So That’s a pity that it works that way. For now, the Supreme Court has not yet decided on the interpretation of this provision yet because none of the cases have reached the Supreme Court on this issue on this particular issue. Some of the cases are moving forward to the Supreme Court in from the bill instance right now, but we will see how all of that unfolds. There have been some legislative initiatives. Aimed at trying to fix that situation. So some draft laws were filed to the parliament because it is now obvious to everyone that we have a flaw in this law. be somehow dealt with. But for now, the parliament has not adopted any of those laws. It is still a pending question to be resolved, but for now, yeah it’s a bad situation for generic companies. Because when you have a plan to launch your generic pharmaceutical in Ukraine, and you try to file the application for medicinal product registration, and then you get sued by the originator. Which claims that well, actually my patent is now is still in effect. Yeah, yes, it’s still effective. So you cannot go into Ukrainian market with your generic product, unfortunately. Yeah, that has been causing some problems. Do you know when there’s usually? considered to be an infringement for generics? Is it when they apply for reimbursement or is it when they get their MA marketing authorization? Yeah, that’s another question about the Bolar exemption, which has not been fully implemented into Ukrainian legislation as it is in the EU countries. Our governmental authorities are aware of the problem and they are saying that they are moving into like the EU approach. But for now we do not have the clear polar because the mere fact of filing the MA application is considered to be an infringement. So it is or it is. Yeah. Oh, wow. Okay. Considered infringement. So if you are filing the application, you are infringing because the courts say that if you’re filing, you are preparing for infringement. And so under Ukrainian legislation, the infringement is the, the actions themselves or preparations to those sections and filing the email. Application is considered to be preparations to infringe in actions. And so those the course usually issue the pi on those on in those cases. And they forbid the consideration of the MA applications in this cases and forbid to the governmental authorities which registered the medicinal products from issuing any decisions under that application. So until the consideration of that case. Yeah, that’s how it works. Interesting. That’s the first jurisdiction that I’ve heard of that does it that way. Yeah. That’s, it’s very interesting. Yeah. Unfortunately, we, we still do that but hopefully we will get into a more, civilized way of doing . Oh, and it’s not necessarily just because everyone’s doing it, it’s better or worse, but of course there are some good arguments for not having, not considering it an infringement if you apply for marketing authorization, certainly. But yeah, that’s interesting. And so when, if all the patents are that prolonged, does it mean that we see more aggressive patentees? That file possibly more infringement actions because they think their patents are they’re safe from patent invalidation or expiry, or is it not necessarily changed maybe also because of the political situation that people don’t use the court system as much right now? Yeah, we had more court cases filed by the patentees who consider their patents still valid. I would say that not all patentees follow that approach of the courts because there are some patents. Which have expired during martial law and under the court’s interpretation, they are still valid. However, the patentees allow generic companies to come into the market, even though their patents still can be considered by first appeal instance course to be valid. It’s only, I think one or two companies who are pretty much aggressive with their patents and who have their patents for 27, 28 years. And they still file the infringement actions against generic companies who try to come into Ukrainian market. So that all depends, I think, on moral principles and on the attitude of the patentee himself. Yeah. Towards what the protection of his rights should look like now in Ukraine. However, I would say that  the situation may be getting better because if to look closely at the court cases, which were already filed by those originator pharmaceutical companies, they seem to be As of this moment on their way to settlements. So perhaps we will soon have the situation when we do not have yet the final decision of the Supreme Court on the issue of validity of such patents during the martial law, but the market will regulate it like by itself. So hopefully that will be the situation that we will get that it will just be settled on its own. And I would say even about the IP cases, which are now considered in the course I say, I think that the majority of the cases which are considered now in IP sphere are concerning patents and pharmaceutical products. So that’s popular sphere of of litigation, which is now ongoing in Ukraine. Copyright and trademarks are now decreasing in the numbers of litigations. But overall, yeah, that, that’s the proportion of the cases. Interesting. And I also read something in your summary that there used to, there was supposed to be specialized IP courts and they haven’t yet come through or is that correct? Yes. We have the special high specialized IP court envisaged in our legislation in several legislative acts in, including in commercial procedural code of Ukraine. And that was introduced in 2017, if I’m not mistaken. And so this court has the jurisdiction over all IP matters. It has been even established as a legal entity for now. So it does have even one, one employee yeah, working there. And Ukraine. Actively had been feeling the judges positions in the first and appeal instances because there are going to be two instances within this one court. We had to already finished, almost finished the first instance. course selection, judges selection and started the bill instance judges selection. However then there was the moment when our high qualification commission of judges was not functioning and other authorities. Which are the governmental authorities for courts and appointment of judges have not been properly functioning for some time. So this process was paused then. After that the aggression of Russia started against Ukraine. And so that issue was resolved. Postponed until the better days for now, the process has not been resumed, unfortunately, because our high qualification commission of judges, which is now fully functioning properly as it should they say that their main priority for now is to feel the the open vacancies off. judges on local levels, for considering civil criminal cases, because there is a lack of judges. Unfortunately, now in Ukraine there are some courts district courts where there are only like one or two judges and a lot of open vacancies. And so their priority now is to fill those vacancies and to try and, reach our judicial system with judges. So that it’s so that it provides the effective protection to Ukrainian citizens on the most basic levels. Yeah. And there are a lot of issues now with the criminal cases with war related crimes. And so that’s what they’re concentrating now on. So the IP court is now paused, unfortunately, however, the IP community The legal professional community in Ukraine, they are very much lobbying the resuming of those selections and examinations because the IP court is something that is very much attractive Or investments. If the foreign investors see that the country has the court which can actually effectively defend their interests with and the judges will be like highly qualified in IP. They will more likely invest in the country because they see that there are effective mechanisms of protection of their rights. So strategically, I, the establishment and the launching of the IP court is, would be very much beneficial for Ukraine, but unfortunately on practical level, it is not in, in the highest priority right now. Yeah. So unfortunately now we do not have that court, but the IP cases are considered in civil in civil courts and in commercial courts, just as they were considered previously. So nothing changed in that way. Is it more like the American model where judges who do other types of law also do patent law, or is it more like the German approach where you own probably also French approach where you have judges who do nothing else? Yeah, we do have the specialization of judges in our courts so that the judge can be specialized, for instance, in competition cases in some commercial law and IP law. I think that we have very little number of judges who do solely IP cases. Usually it is combined with some other specialization but yeah, so they are connected specialization, I would say. So it’s not like I like hear criminal cases and then I hear the copyright case. That’s very, I think, rare occasion in some civil jurisdiction. In commercial jurisdiction, it’s more, mainstreamed into like more or less connected specializations of the judge. Yeah. Very interesting. Very cool. And then we also might shift gears a bit because I heard that, or we talked about earlier briefly that you also writing a thesis and what is the topic of your thesis that you’re writing about? Without, of course I know everyone will want to know and then maybe steal your ideas. So you can sketch it broadly if you would like. No, I’m not afraid. I really want people to steal my ideas and I really want all the other countries to steal Ukrainian approach. Yeah, very good. Because I think that’s a very progressive one. So that’s, I think the highlight of our IP law is that even during wartime, We do have some new legislation in IP. So that’s not in the last place at all. We understand the importance of protection, protecting IP rights, and we move in the right direction. Yeah. In 2023 The new copyright law entered into force, and there are a lot of like new, I will go like broadly, from the beginning. And so there are a lot of amendments into the legislation now, which is now much more resembling the European legislation in copyright. And so the list of. free use of cases, the public license which can be issued for using the copyright works and so on. But the most interesting thing is what I’m writing my thesis about is the way that Ukraine protects AI generated. So we have the sui generis model of protection, which like a lot of academics only talk about, but we have it now in our legislation, It basically is that Ukraine gives the, it is in the copyright law provisions. And it’s in the chapter with like copyrights. However, it is not copyright per se because sui generis, right? It gives you someone the protection over non original AI generated object. So it’s not even called a work because work is something that is. It’s created by a human. So it should be like personal connection to someone a live person with personal touch and all of that. Here we say it’s non original, so it does not originate from a human and it’s a war. It’s an object. It’s not a work. Yeah. It’s a very interesting form of protection. And so it’s, It’s not a copyright. It’s something else that you came up with basically a new IP, right? Yeah, it’s a new IP, right? It’s not copyrighted per se, however, it has a lot of requisites of copyright in it. And it’s called non original because it’s not from a human or is it non original because it’s been created from previous material that you’ve fed into the machine? I think that it’s more first option because it’s not originating from a human because it doesn’t have the originator, like a natural person originating it itself. Yeah. I see. Yeah. Very interesting. And so how why did Ukraine come up with this? Is it because you just happened to get a new legislation and then you thought, Oh, we take the latest what we have or were there some people involved who just happened to be very modern very farsighted or how do you know how they came about? Yeah, I think that’s both actually that you mentioned you get to the point first is that the draft of the copyright law was has been was being prepared for one or two years. So it’s even before the invasion started, it was already drafted. Yeah. And there were some people which were very active in, pushing that, that provision. That’s mainly the academic people. So the people who are aware of the approaches which exist now in all the countries and of the approaches which are being offered in Other jurisdictions. And so that was the moment when we were adopting a brand new copyright law. And that was the perfect moment for those people to push that provision into the draft law so that it is adopted along with all other provisions. But yeah, but I think that’s the very good thing that we had like this, the star moment of this provision to come up in our legislation. Very cool. But yeah so that’s perfect actually. So we’ve beautifully Touched on all the topics that I wanted to touch on. Is there anything else you would like to highlight or to talk about? Not really. If perhaps we should a little bit expand more about the sui generis stuff. Oh, of course. Of course. Yes. Yeah. For another two, I didn’t know. I didn’t know how deep you wanted to go. Yeah. Yeah. That’s not, I really don’t mind like talking more about that because because it’s a very, I think, balanced approach with regulation or that, or this issue. Yeah. Definitely. I will just expand. Please. Yeah. Yeah. Yeah, and the essence of this sui generis approach is that it gives the owner of that object only property rights. All of the rights which are envisaged by the copyright law so the right to use, to permit use, or forbid use to the third persons. So it’s all that you get. You get it for 25 years and it’s not calculated from the moment of death of the author as it is in copyright law, but it is calculated from the January 1st of the year, which is the next one after the year of the generation of that object. And so the owner of that of that IP object, it can be someone who is actually listed in the contract. The contract is the terms of use of a certain AI model, so to say. So it can be the owner of the program or the person who has licensing authority over that program, or it can be the user and In the process of like writing my thesis I was researching for some examples on the terms of use of different AI models. And it appears from one of the report that I found that almost all of the AI models give all the rights to the output to the users. So actually under this Ukrainian model, if you as a user generate something With the use of the AI, it is yours to use for 25 years and you can limit other persons from using this, your object. Yeah, it’s a very interesting one. Yeah, and no moral rights arise at all. So it’s only proper choice. And it makes total sense because moral rights are intrinsically connected with the author and with the person who created that work. So it’s pretty illogical that there shouldn’t be any moral rights at all. So there are no, so moral rights like in, for example who is supposed to be, who has the right to be called the author or who has the right to avoid others from distorting it to some some way. Okay. So that means there are no moral rights at all or it’s just the person who creates the software or really nothing at all? No moral rights at all. So it’s not even the right to name which is one of the moral rights. Yeah. So it’s just using it’s, I think it’s pretty, utilitarian approach because it is the content that you can use. You can allow license that to third parties to use, and you can sue someone for using it without your permission. And that is all that’s all that you get. Yeah. Yeah. I was gonna, I was going to ask, maybe you’re going to touch on this, but I was going to say what if I, for example, say, write a story like a lot of the rings, but in the style of, I don’t know some modern writer. So maybe like John Grisham, a lot of the rings in the style of John Grisham. So obviously, even if that’s something, novel or non original there, there’s the question of don’t I infringe their rights in some way? Yeah that’s exactly the point that I wanted to move our conversation to, is that if you, during the generation of your object, infringe upon someone else’s right, you do not get the right at all. So the requirement of the law for, the existence of this right, is that you generate something without infringement of. anyone else’s copyright or related right. So only then this right appears. And so I think that we had not had the practice on that yet in Ukraine because this provision is pretty new and very little, amount of people know how to use that. Yeah. Yeah. And so it hasn’t been tested on practice yet. But I think that there is going to be something like in a traditional copyright, like the presumption of authorship, so that you have this right from the moment of his, of the creation of the content. However, the if, In the process of some litigation, if you’re infringing someone for infringement of your rights, if you’re suing someone for infringement of your rights, it appears that you have created this object with infringing of someone else’s rights of some previous copyright. Then it appears that you actually do not have the right and you are suing someone without the legitimate interest to sue. And so you’re. your suitcase will fail, actually. That’s very interesting. So that, because I imagine this, so then people would have to say you prove that there’s an infringement of previous rights. So to keep, to stay with the example of Tolkien’s Lord of the Rings. So you would have to, for example, then maybe either look at what the story is like, and then try to compare as you do maybe in traditional copyright. But one thing you could also do is maybe look at the prompt that you gave to the AI when you say, for example, write me something that is like that book in that style, that would be because I assume that would be saved by whoever owns the software, the AI. So then that could be used as a way to infringe. And on the other hand, if then, for example, just say, write a story. about some guys against an evil person and make it sound like a legal thriller. And then it comes out to be sort of Lord of the Rings a la John Grisham, then it’s much more difficult because then the question is also, I don’t know if that is the case in traditional copyright or not, if you need a mens rea, if you need like the knowledge and the will to infringe, or if you’re already infringing, even if you didn’t know you but that would be, become a problem. Yeah, I think that’s going to be one of the problems for courts to resolve. Yeah. And also one of the problems that I see that can appear in the courts is actually what is AI generated content at all? Because there is a distinction between AI assisted when there is human interaction. And AI generated content, which should be without direct involvement of the human. And our provision actually says that the works which are produced by AI with involvement of the human are just. Copyright, copyrighted work, so they are not non original objects which are protected under this provision. And so we will have to resolve which extent of the involvement of human is required for it to be AI assisted or AI generated work. And yeah, there are a lot of questions to be resolved, but at least we are heading somewhere, with this regulation. They, that it is possible to regulate this issue in this way. So you can possibly even try and look at us as a living laboratory here, trying to tackle that issue. Yeah. And then, to choose whether you want to adopt that approach or not, but it’s certainly interesting one to to consider. Very interesting. And so you look in your thesis, you look at how that came about, or if it’s a good idea or how it will be implemented. Is that your approach? Yeah, I think that I’m more looking about on the like superiority of this approach over the other approaches which exist in the world. Like for instance there is approach of the UK which is invest in their copyrights, patents and design act of 1988. And they actually have the provision on protection of computer generated works back in 1988. So it’s been like, Almost 40 years that they have this provision and some common law countries, or the countries which resemble the UK’s legislation like Ireland or South Africa, they actually have those provisions in their legislations as well. And however, this approach. It raises a lot of questions with regard to originality because it is still, in the copyright sector of their acts. And so that presumes that the objects generated should be original and they are actually called like the works. They are not objects. They are the works. And that raises a lot of questions with regard to the legal nature of those. Of those IP rights that they have in their legislations. Yeah. Or like in, in the U S they explicitly say that there is no protection to AI generated works at all. It is all in public domain. It’s all unprotected and you can use it as you wish. So we do not have, do not give any rights to do that and do not even presume that it can be somehow related to copyright or something resembling it. Interesting. So interesting times ahead. We’ll see which approach wins out or how they develop. Very cool. Yeah, that is true. Very cool. All right. Wonderful. Any other topics or points you wanted to mention? No, I think that we’ve covered All the main points and I thank you very much for your interest in all of this stuff and in Ukraine. No, thank you. Thank you. It’s very amazing. Are you going to be a coach again next year or are you giving it to the next generation? We were thinking about with the girls about giving it to them, to coach the next generation of lawyers. Yeah, and they’re still considering it. Hopefully it will work very soon. If they do not then Talia and I will step in. Or just sue them to do it. Yeah. Yeah. Do you want to judge again? Yes, I think yes, definitely. If I if they will have me and if I can make the time I’ll definitely be back. So it was a lot of fun. And especially because I’d never dealt with design rights before and then I was supposed to judge people on it who probably wrote dissertations on it. So that was a bit funny but it was great. It was a lot of fun. It was a lot of fun. I also had a question what is why did you decide to do podcasts? Is it just your hobby? Yeah, It’s just a hobby. And I also want to make clear that it’s had nothing to do with my employer although it of course is inspired by me doing patent law for work, but it has, but it’s completely private. And my employer doesn’t. Theoretically doesn’t know I’m doing it, but of course I’ll be posting it everywhere. So they probably become aware of it but I think, no, I’ve wanted to do a podcast on law or like interviewing any sorts of jurists or lawyers, I think since 2014 or something, and I never did it because there was always something going on. And so I forgot about it. Then I, when I started doing my I started doing a defi, like a PhD at Oxford at some point. And I was a guest on a few podcasts for some reason because I, some people asked me and I I them, and then, so that was a lot of fun. I thought, wow, that’s really cool. And then I actually took over a podcast from another guy. at Oxford who stopped, who graduated. And he, and I knew him from a documentary, like literally I saw the documentary on university challenge. I don’t know if you’ve heard of that. It’s like a, it’s like a game show for university students in the UK. And I just wrote to him because he had a website and he was just so amazing. And on his website. It said I’m retiring. And I don’t know, he’s like in his mid twenties or something. I’m retiring from my podcast. And if anyone wants to take it over and is that is a student at Oxford, write to me. And I wrote to him and then I took it over and I did two episodes because I was doing it part time. So it wasn’t in the UK and it was also during a COVID. And it was just, I just couldn’t find enough people to be guests because I basically cold called everyone. Or I asked a few people who own everyone who’s on there is a friend or a friend of a friend. And yeah. At some point I’ve ran out of people who, wanted to do it and wanted to do a podcast and also wanted to do it online. And I just and I had too much other stuff going on. And then I but I do have all the equipment and so I thought yeah. And so at some point, like I had, I got to know more and more people in the IP space through certain events. And then at some point I could think of 10 people on the top of my head who’d be great guests, you of course being one of them. And then I just cold called a few of them. And so now I have about half a dozen people or seven people on who said yes already and then a few more who said maybe. And so I hope I can keep it going for a while. And and yeah, it’s just something to talk to interesting people. To have a reason to talk to interesting people about something I find interesting as well. And because I did like the old podcast I did, on number theory and math and I didn’t know, I didn’t understand anything, even though I was the host and you can listen to it. It’s still online. It’s called what’s it called? In our spare times there’s a famous BBC podcast called In Our Times, which is really cool about all sorts of academic topics. And then they invite professors who talk about it. And we call it In Our Spare Times, and I didn’t know what I was talking about all the time. So here, it’s some, it’s usually the same, but at least I know the basics around it. And so that’s fun. Yeah. Awesome. Also, if you want anything, if you have any sources or something that you would like other people to read or if you, so I would, what I would do is the thing that you sent me, maybe I would put that in the show notes so people can download that if they want to. Okay. If you like, because you of course have the copyright on it. Yeah. I love it. I’ll give you my license. Awesome. Okay, great. Awesome. Thank you. Awesome. Thank you very much. No, thank you. Thank you so much for having prepared so well. Yeah. It’s so great that you’re doing that. It’s so nice. And your history with podcasts and yeah, it’s, and that’s very great that you’re educating people. Yeah. Yeah. Yeah. Including myself. Yeah, that is true, but that’s very interesting to learn about new jurisdictions, new approaches. That’s all. Yeah. Cool. Very cool. Yeah. I will send it to them. I will send you that. Thanks. Bye. Cool. Yep. All right. Take care, Luna. And then we’ll be in touch. Yeah. Thank you very much. Bye. Have a nice day. Bye bye. You too. Thanks so much for tuning in today. If you enjoyed this episode of IP Talks, be sure to check out our other episodes and subscribe to the podcast on your favorite platform, whether it’s Apple Podcasts, Spotify, Google Podcasts, or wherever you listen, and don’t forget to follow us for updates and new releases. We really appreciate your support and we’ll catch you in the next one. Bye. Show notes below Podcast_Ukraine (Background information) (https://ip-talks.com/wp-content/uploads/2024/10/podcast_ukraine.docx)Download (https://ip-talks.com/wp-content/uploads/2024/10/podcast_ukraine.docx) Maidanyk Sui Generis for Ukraine (https://ip-talks.com/wp-content/uploads/2024/10/maidanyk-sui-generis-for-ukraine.pdf)Download (https://ip-talks.com/wp-content/uploads/2024/10/maidanyk-sui-generis-for-ukraine.pdf) [Guest post] New Ukrainian Law on Copyright and Related Rights – The IPKat (https://ip-talks.com/wp-content/uploads/2024/10/guest-post-new-ukrainian-law-on-copyright-and-related-rights-the-ipkat-1.pdf)Download (https://ip-talks.com/wp-content/uploads/2024/10/guest-post-new-ukrainian-law-on-copyright-and-related-rights-the-ipkat-1.pdf)

11. 

    19 Oct 2024

    #3 – The Indian Approach to IP – Part 2/2 (Suryansh Singh & Manja Gupta – Season 1 – Episode 3)

    Summary In this episode of IP Talks, hosted by Jan Willem Prügel, Indian law students Manya and Suryansh discuss the intricacies of the Indian patent system in contrast to Western approaches. The conversation delves into the unique challenges of enforcing patent rights in India, including an overburdened judiciary and innovative interim measures like Anton Piller and John Doe orders. The episode covers key topics such as the role of public interest in IP litigation, the protection of personality rights, and legislative amendments that shape India’s legal landscape. Real-world cases such as the Novartis and Gramophones cases are discussed alongside comparative insights into German IP law. The show underscores the necessity for timely interim measures and the social welfare roots of Indian patent laws, providing listeners with comprehensive insights into the complexities of IP litigation in a global context. Transcript Disclaimer, the views, opinions, and statements expressed by the hosts and guests on this podcast are entirely their own and do not represent the views of their employers or any affiliated organizations. Additionally, the content shared on this podcast is for informational purposes only. and does not constitute legal advice. For any legal matters, listeners should consult a qualified attorney or legal professional to receive advice tailored to their specific situation. IP Talks is a Jan Willem Prugel production, all rights reserved. Welcome to the second part of our episode with Indian law students, Saudi and. Sing. And . A significant portion of the episode. Is dedicated to comparing the Indian patent system to those in the west. Especially in terms of public interest considerations and interim measures. The conversation also delves into the importance of public interest in Indian IP litigation. Especially as it pertains to essential drugs and affordable pricing. Our guests share real world examples that illustrate the unique challenges and quirks of enforcing patent rights in India. They also talk about interim measures like Anton Piller orders and John DOE orders, which can both significantly impact the cause of IP litigation. To what’s the end, the episode, transitions into an open discussion on global IP trends. And the future of patent litigation in India, providing you with a well-rounded understanding of the topic. We start, however, with an informal chat that we began during one of our breaks. About the Jessup moot court that my two guests have been applying for. Relax, sit back and enjoy the latter half of our discussion with . And Manya. Welcome to IP Talks, the world’s greatest private podcast on all things intellectual property, starring some of the world’s leading IP practitioners and your host, Jan Willem Prügel. You’re in for a treat. Enjoy. so you asked whether or not I’ve been doing the Jessup No, but I judged in the Jessup for our, in our local. So they are premutes as you, you probably aware. And in our law firm, I judged the Jessup twice without, I don’t know that much about international public law. But it’s, I did model United Nations, which is somewhat similar. And I had it in my, my major, I guess you could call it. There was some international public law. My real major was international private law. But there are some overlaps and I, the Jessop is of course the granddaddy of them all the biggest one and the most difficult one, the most prestigious probably the most prestigious one. I did the Wismut court, the Willem C. Wismut court in arbitration. Which I think it’s probably not quite as intense and I found more my, to my liking because it was more about money and less about people’s lives. Because like in the last few years in the Jessup, it was always about war or like extortion and corruption. So it’s very different. And yeah, and it’s, it’s very, so you guys are signing up for that or applying for that right now. Yes, that’s wells, that’s intense. You guys will do awesome. I have no doubt that you’ll, if you do it, you’ll be a force to be reckoned with. But it’s a lot of work, but you know that. Yeah. Yeah. Very cool. How many people are in that team? Usually? Five. Five. Five. Alright. Yeah. And so you would we, sorry, we’re still in the process of the formation of the team. Essentially, our internals are going on and the submissions were for. The internals. So when I discussed with you, I have a couple of submissions, both were memos that we had to submit in memorials that we had to submit in our internals in order to get the Jessup moot court. I see. Very nice. And so the IP moot court was probably a good start to this and it gives you a leg up in your applications. So whoever’s judging this you guys. should definitely accept these two because they’re amazing and great speakers. I can tell because I was their judge. Very impressive. Anyways. So I okay. So then fingers crossed and I hope you’ll do well. So before the break, we were talking about the getting back to the general enforcement of patents in India and the patent litigation system. If either one of you would like to lead us through that and explain a bit how it works. Yeah. Before anything else, I just mentioned that one small statistic that the civil case pendency in India is about 45 million cases only at the district court level. That is the smallest courts. We can, at the moment, leave the discussion about the higher courts and the Supreme Court, but only at a, at the district court level, that is the pendency. 45 million, you said? 45 million, exactly. And if we talk about the high courts, then that is dependency in just one of the high courts of the most popular states, that is dependency. So any conversation that we have about the litigation system in India must be had with that in the background that this number, the fact that at any point in time, the judiciary is extremely overburdened. Yeah, in that light I think Mania can explain a bit more about the IAP litigation system. No, go ahead. But I think a very popular phrase in Indian culture is something that in Hindi or rather Urdu, it’s tarikh pe tarikh, which means a date after date. And that’s what the entirety of the Indian public see the courts as doing, simply giving one date after the other. In fact, there is a, there’s a portal called the National Judicial Data Grid. Which gives you like a live count of the backlog that’s present in the Indian judiciary. So I’ll share the link with you. It’s a very interesting website. Absolutely. By the way we will have show notes. So anything you can you want the listeners to see or to check out themselves, you can then afterwards send to me and then I will provide in the show notes and they can have a look at it. Yeah, I think that’d be really useful because some of the things we’ve talked about are yeah, a bit confusing. So the problem in Indian courts, I think this is something Europeans or any other country would be familiar with is that we have a lot of people and with a lot of people we don’t have enough courts to handle the cases that come to us. Even despite increasing the number of courts and having specialized courts, India cannot really deal with the cases it has currently and that’s why we have a backlog. And it is the same backlog that leads to a slightly slow enforcement of general IPRs in India, because IP is something that’s a part of the civil side in Indian courts. And courts generally try to have criminal matters decided as expeditiously as they can. And then the backlog in civil cases is much more than it is in criminal cases. So the typical, I’ll just explain the structure of a typical IP litigation, and then I think Suryansh can take over. The life of Applying for a patent in India is you go to the intellectual property board, which is, I think, headquartered in Bombay. You apply for the grant of a patent, and then there’s something called a pre grant opposition and a post grant opposition. And after it is granted, that’s where the real litigation starts. Because in India, there’s a presumption that grant of a patent does not mean the patent is valid, and it can always be susceptible to a challenge. So you have various kinds of claims in India. I think we’ll just commence with basic patent infringement claims. The basic process is that you either go to the district court or you go to the high court. And then the onus or the burden of proof. is on the claim is on the petitioner who states that their patent has been infringed. So the burden is usually on the company who are saying that there’s been an infringement on our patent. And then what essentially happens is, in India, because it takes a long time to get a patent enforced, a majority of cases go through something called an interim measure, where you essentially, while litigating the patent, Also apply for an interim measure. And they’re usually granted by courts because even the court acknowledges that it’s going to take a long time for this case to actually get finished off. And that’s where I think Suryansh can pick up. Absolutely. I believe that’s one of the very interesting innovations that the judiciary has come up with, which Mania and I were discussing just like a while ago is quite unique, but at the same time, quite has its own repercussions. So provisional measures or interim orders, interim injunctions, there are several names for the same but they’re in the nature of essentially action taken against an infringer. Before any infringement claim is proved, and it is essentially based on a patent that a person already has, or a claim that is very strong on the part of the patentee. There are certain characteristics, especially one of the important characteristics is harm cost to the patentee. So if the harm cost to the patentee is significantly high, based on that degree, an interim measure is given. The Delhi High Court. Which is one of the one of the largest centers for IP litigation in India is very liberal with granting interim measures. I’ll just give an example for that matter. So recently India has been developing a jurisprudence of personality rights. For example, if I’m not sure if you’ve heard of some famous actors like Amitabh Bachchan or Anil Kapoor or someone like Jackie Shroff, all of these people are very famous actors in India, at least in India, they’re very popular and merchandise with their pictures and their voices is often sold without any permission. And recently, the Delhi High Court has been granting interim measures to protect the sale of these merchandise, which effectively is something that just cannot exist in India. The regulation to that extent just cannot happen. It is impossible. Like the number of posters on which Shah Rukh Khan, someone like Shah Rukh Khan or Amitabh Bachchan is there is innumerous. I don’t think it can at any point be regulated. But yeah for better or for worse, interim measures is a jurisprudence that has significantly grown on in India. It is sometimes problematic because by its very nature, it is, it’s supposed to be granted urgently. And it can even be granted ex parte. So it can be granted without even hearing the other side because, and the defense given in that favor is that it is an interim measure essentially does not require everyone to be heard all the time because it’s for the time being, but for the time being in India is a very long time court cases can be pending for years and decades on. And during that period. the interim measure stands as the order of law. So that can be harmful. That can be a difficulty, but at the same time, it is to some extent patentee friendly because it gives them a mechanism to address an issue in a riddled judicial system, essentially. So where these interim measures actually come into play is usually the high court. So the typical I like to say life cycle of a patent infringement case is either you start in the civil court, which is the lowest court where the infringement has actually happened, or if your claim rises above a certain value in Indian rupees, you can just file an application in the high court. under their original jurisdiction. Is any of, sorry, if you already covered this, but is any one of those quicker than the other significantly? So the high courts are usually quicker because every, almost every state has its own high court and an appeal from the high court directly lies to the Supreme Court. So in India, we have a three tiered system. At the lowest level, we have civil courts, civil and criminal courts. At the second level, we have high courts, and then eventually we have the final court, which is the Supreme Court. And are the judges technically trained when they do patent law? Are they exclusively doing patent litigation? Or is that just a luck of the draw, a bit like in the US? So it is, in some ways, it is a luck of the draw. But at the civil court level, you typically do not have judges with any experience of science or even in patent litigation. There are judges who have to read up on every matter. So typically what happens is most cases in India of patents go to the high court because it’s usually appealed by companies. And then in the high court, and I’d say this with extreme respect, we have a lot of judges who specialize in patent law. We have Justice Pratibha in the Delhi high court, who’s writing a book on patent law currently. So there’s some judges which are really great at patent law, but then if your case will go to that judge is again, as you said, And segregation of the pay of the IP system or the patent system is something that we do not have. We had an IP appellate board, which essentially segregates in IP matters from other matters. And there, obviously there was some specialization, but it was taken off and it’s now a usual part of the civil law system itself. It’s. It’s essentially to a great extent, lack of the draw, because what expertise does a person have, whether they have any technical knowledge of any drugs for that matter is completely dependent on who the case falls upon. Would you say that that the Indian judiciary is overall putting out decisions that are fair and reasoned? Or is it sometimes, because we have that in Germany as well, where we have some patent especially in the first instance, who are extremely specialized and they are highly qualified in this area. And then sometimes we, there are some courts who are also who are competent to judge on patent matters, but who don’t have the same level of expertise. And sometimes their decisions are a bit let’s call them Difficult to predict. I don’t know what is your view maybe on, in India on this matter? I would say that the certainty that arises as less as it may be in Indian litigation is only from the legislature because at the stage of the judiciary, it is the level of certainty is quite lesser. Especially when we vary from one high court to the other, the Delhi high court the new day, the high court based in New Delhi, that where we all study right now is extensive in terms of its IP litigation is very huge is very vast. And it’s. In to some extent, it’s revered as well because its decisions are extremely reasoned. They are patently friendly to some extent and they are more inspired by literature and sources that are prevalent in the west But the same can certainly not be said about multiple other high courts Many of whose decisions are not even reported at the same time, the Jewish, the jurisdiction of Delhi high court will only last the extent of Delhi, which is not very huge. It’s a, it’s one of the smaller sort of sub subdivisions, a territory in India. On the other hand, some divisions are extremely huge. Some states are extremely huge. And their intellectual property, jurisprudence is extremely uncertain as uncertain as it gets. So I would say that is the case very much with India as well. That at the high court level, what decision you get is something you cannot control at all. Which is why most of the companies try to push at the legislative level. They try to have a negotiation or bargaining chip within the legislature so that their amendments or their requirements are pushed through at the state of, at the stage of a legislative amendments or executive rules. rather than judicial intervention. So I believe, so you mentioned that India is a common law system due to its British history or history with Britain. And then you should also have the Stare Decesis rule where the Supreme Court sets a case law and then the lower courts are bound by it. So does that help at all to, to take some of the uncertainty out? Or do the lower courts do what they want, despite of what the Supreme Court may have done or said? So I think the quantum of IP litigation usually lies in high courts. The cases that do come to the lower courts, I’d say lower courts are bound by decisions of the high court and decisions of the Supreme Court. But what lower courts usually end up doing is they distinguish the cases. And that’s something the high courts also do quite often. So they say this case is different. So we’re not bound by the case law. Yeah. As in every other field of law. But I really think that one commendable thing that high courts have done is that they usually try to stick to one principle because one very big IP judges. is that Indian IP law is evolving. So rather than just the fact that you have to settle a case, there’s also the bigger picture that we have to set a precedent for Indian IP law, that our case must not be a black mark in the history of the evolution of IP litigation. And that’s something that the high courts, particularly some high courts have really incredibly done, which is they protect parent rights and they generally try to be as consistent. in granting, in protecting patents and granting interim orders. But there again, there lies exceptions or distinguishments or cases which are completely unexpected, which are often overturned or sometimes even affirmed by the Supreme Court. So the Supreme Court has very less role to play honestly when it comes to IP litigation because there are state regulations in play, there are sectoral divisions in play which affect everything a lot. So the Supreme Court, whenever the Supreme Court delivers an IP judgment, it’s usually a huge cause of discussion because it’s essentially a very landmark judgment for that. For that matter, if Novartis is to be taken as an example where they held that Section 3D is to be interpreted the way it is, that is, no person can just improve something and claim for it to be a new patent. That is one of the big examples. There was also one case which I believe the Gramophones case that happened in 1970s in India, which was another thing that we would have wanted to discuss. in the Indian European IP juncture is wherein the case essentially said that transit for the purposes of IP law in essentially means importation. So the TRIPS agreement says that the law applicable to any good. is the law of the country of importation. And in the Supreme Court of India essentially has very clearly laid down that transit includes importation. So if any good is transiting through India, we can apply our own laws there. And that said, that settled law. However, when Europe does the same, Which happened in 2000 10, I believe. In such cases we have made claims against it in the WTO to state that the country that is in the middle, the transit country cannot apply its own laws to seize or destroy goods. The Supreme Court has in, and the reason we give is that this is not a legislative law. This is not a legislative provision. This is just something the Supreme Court has said. However we very use, we. use that position as a matter of law in our country. So the Supreme Court’s role is very extremely apocryphal. It’s to only set very landmark distance. Other than that, it’s mostly on the high courts. I see. Interesting. That’s very good. Very good to know and to understand the system better. Thank you. So moving back to the, so the enforcement and the patent litigation structure, I believe I interrupted you. I believe a lot of what we had to cover had been has been covered within the question itself. If you had any other questions that you would have wanted to ask regarding How common Is it for foreign companies to file proceedings in India? Is it, do they try it a lot? Is it done or is it usually, as you said, mostly by now done on the legislative level? I think it’s extremely common because companies can only, there’s only so much you can do at the legislative level except to lobby. So most all cases are really extensively fought out. In the Indian patent litigation arena and I think I think it’s, I think a good observation is that the fact that cases are appealed often, as in they go to the high courts often from the civil court or they go to the Supreme Court often is a testament to the fact that companies do continue to litigate. their infringement claims. And I think India as a country, it might be a better, it might in generic medicines, it might not support companies, but in terms of granting patent infringement reliefs, it really comes out in favor of the, in favor of the patent owner. And I think I think a good transition point can be maybe Jan, you can tell us about what kind of reliefs do German courts offer? Because in India, because of delay in cases, the most. The foremost remedy any kind of patent owner would want is an interim measure for the court to immediately grant an interim measure But is that different in germany or is that different in europe as a whole? Because I don’t think you have the kind of delay that we do. So So pi measures are quite common in the large in the larger cases with companies where a lot of money is at stake and the pi measures usually at least in Germany are either sometimes they are ex parte, but more often than not, they’re also, they can also be with an oral proceeding. And then the measures that are usually sought are injunctions so that the injuncted party no longer is allowed to use the infringed the infringed patent, any form by providing or selling the intact embodiment. It also includes the if the so this is usually done on the injunction level, and then they’re also asking for a declaration that there has been an infringement and then you would have to later. have the main proceedings where you would then discuss further issues. So for example, in the main proceeding, they would also ask for the injunctions. They would ask for a declaration that there has been an infringement and then therefore there’s damages to be paid, then the damages themselves the amount of damages, they would then be discussed in a subsequent proceeding and in order to be able to quantify the damages that are being asked for the companies would claim access to the books that had been associated to the accounting in order to be able to quantify how much they had actually had as a profit. So there, there are various ways to then Calculate the amount of damages. So they, in Germany, they’re like three accepted ways. One of them is the infringer profit, which is commonly done where they say, okay the infringer has had these and these profits. And it also allows the infringed part, so the patentee to look into some of the business practices of the party that is being sued. Another one is a license analogy. So you’re asking for a license that you know, for the money that you would’ve been able to get as a license if you had given a license. That allows the companies also, and also the company, so the patentee to not having to open their books because they can just calculate the amount of licenses. Of course, this is rather difficult because it depends on a lot of factors, and the third way is lost profit. Basically, the in patentee would have to show. that the amount of profit that they would have had and the amount of profit that they lost due to the infringement. This, of course, requires them to open up their books and say, look, we made this much money. This is our profit margin. And this is why, what we left, what we lost. And this is, of course, not in the interest of the patentee and a lot of. cases, because especially in pharmaceutical cases, because then they have to show the other party look, this is our business. These are margins. And that is not very common. In any case, a lot of times there are no quantum Proceedings or decisions on this, because usually they settle in at that point after it’s been decided that one of the parties has in fact infringed. So injunction then, Oh, then of course the product has to be removed from the cut from the market, any product that they still have in the inventory has to be destroyed. And they have to pay for it damages and also recall and possibly other measures as well. And of course they have to open their their distribution ways and show, show information in order to, for the patentee to be able to concretize their claims. So this is what is common and it’s both PI and main. And of course in Germany we don’t have counterclaims for for invalidity because we have bifurcated patents bifurcated patent system where you would then open up a novelty proceeding before the German federal patent court. It will, it’s different in some of the other, like in the UK, it’s very different where you can do that. That’s probably slow closer to the Indian system, but there’s a lot of individual specialties when it comes to, when it comes to the patent litigation side for that. I think it’s it’s quite similar, the kind of interim measures we have in India, but I think we also have very interesting measures where I remember In one case where in the Delhi high court allowed the defendant to sell the remaining stock and then granted an injunction. So that was something that was very interesting and obviously angered the company, but then yes, I was just saying, I believe that was the Supreme court itself, which allowed the remaining stocks. Yeah. So I think one thing in India where, again, this public interest crops up, Is this the grant of interim injunctions itself? And there are certain factors to be considered, one of which is there must be a prima facie case. The second is the kind of harm that’s being caused to the patentee, where the balance of convenience actually lies. And then at the last, we again have the old horse of public interest, wherein courts have quite creatively interpreted it. But then in terms of protecting the patentee, we have similar things. We have Anton Pillar orders where, yeah, where the local police actually go and search and seize the infringing products. We have things called as John Doe orders, where in, in one case, even if it’s between parties, the injunction is granted as against everyone or against specific parties that the patentee wants it to be granted against. I wonder, so there’s also a criminal provision for patent infringement under German law, but as far as I know, it’s almost never being used. What about India? I think we have a similar provision, but again, it’s almost never used because pretty much a patent case practically ends where an injunction is granted, because the company is relieved because there can be no further infringements. So then they start losing steam and the actual decision might come out like years later. Can you, is there a general timeline, how long a PI proceeding and how long a main action would take in India? Or is that impossible to generalize? I think Surian can take this because, yeah, I believe that’ll be, first of all as vague as this answer might be, I’ll have to say it depends. Yeah. Yeah. Just to circle back a little bit on your earlier question about how keen are companies on litigating, I believe they’re certainly extremely keen. Pfizer recently ended its 19 year old litigation at the Delhi High Court where it got a claim for the, yeah, where it got a claim for the trademark of for its trademark on Viagra and they had to fight about 19 years for it. And that’s the first instance, right? Yes. Yes. In India. Yes. For which the claim awarded to them because of the lack of sufficient evidence was about it’s such a small amount. I’m having difficulty converting it into dollars should be about, I think, 20, 000. for 19 years of violation. Actually lesser. No, that’s I’ve quoted a larger amount than it is. It’s about 4, 000. It might not be quite reasonable to fight over that. Yeah. So yeah, so the amount they would have spent in Delhi High Court over 19 years, they probably did not recover one 10th of that. They certainly did not recover one tenth of that. They did not recover, I believe, a fraction of that, if I’m going into details. But, so essentially, but the compensation has to be awarded as it is. And they fought on with it and there might even still be an appeal at the Supreme Court level, which might even go on further. For even a company like Pfizer, the litigate and a trademark like Viagra, the litigation went on for 19 years only at the Delhi High Court level. So essentially it is quite uncertain as to how long it can be for some things. For example, the case Mania mentioned where the Supreme Court intervened and granted an order that the remaining stock is immediately sold. At that time because of this order, both the parties became very interested because one had an injunction against it and the other was allowed to sell the stocks. So they essentially were very proactive in resolving the case, and it was resolved within 30 months. But there are some cases that take much, so they, so the average will be very deceptive in intellectual property cases. The, it’s a very case by case thing, and it depends and varies largely. I see. And but the enforcement, once you have a decision, so once you have a first instance decision, can you enforce it or do you, or is it being, or do you have to wait until the it’s final? That’s that the law with regards to that is quite standard that you are allowed to enforce it immediately after you have it. And it’s all it’s a requirement that the same is enforced within within six months. So mostly when it comes to IP enforcement, the contentious portions are these, that how do you get through the court system? Once you have an order, it’s mostly easier to get through with that order because injunction is not very difficult to enforce in India. Perfect. I mean, so you’ve given us so many interesting points of information on the Indian system. Is there anything you would like to discuss that you prepared and are willing to get off your chest? I think I think one interesting thing that we can discuss is that the public interest consideration that happens in IP infringement claims, that can play out very interestingly.  A good summarization point in Indian patent litigation and to end the whole discussion around generics and enforcement is this thing called public interest in India, which is that even in granting an interim measure or in granting a final remedy, courts consider something that’s known as public interest. Now, public interest has been a huge contentious point and it’s one of the main reasons patentees have a problem with Indian law. And one very big example could be that, not arising out of patent law actually, but rather in copyright law, which is a very famous case that dealt with the reproduction of a lot of books. Now, a lot of big publishing houses, Springer, Kluwer, and everything, they took the case to the Delhi High Court, and the Delhi High Court created an exception for educational purposes. And the result is that now these books are freely photocopied in India. And the court said that it’s in the address of the students. This is something that also helps us, but this is largely where the public interest consideration comes in India. Now, how it plays out in patent law is that in a certain case, the fact that the drug was an essential drug was used in denying it an interim injunction. Even in cases where courts have, there was a very landmark case of Roche v. Cipolla, wherein the court interpreted the non obviousness requirement and said that given the price of, and the difference of the price in two drugs that were used in treating a certain kind of lung cancer and the fact that this drug, the original drug is not really available in Indian market can be a ground for us to deny release. Of course, the actual outcome of the case also depended on a lot of technical factors, but I think public interest has largely been used by Indian courts to safeguard interests of the public when either drug is essential. Or the drug is not available at an affordable price in the Indian market. Yeah. So just to round up our discussion from the very point that it started the roots of Indian. And I’ve, as far as my reading, it goes and Jan, correct me if you’re wrong, the roots of a lot of intellectual property litigation, especially industrial designs and patents very broadly lie in the industrial revolution. And it’s because of that, that people started claiming that I should have some right over my invention in a lot of the countries, not. the early origin countries, but in a lot of the Western countries, that is where the root lies. So it lies in industrialization. It lies in capitalism. It lies in the development and urbanization of the world. But in India, the roots, as I said earlier, Lies in social reform in social welfare that we should have our medicines, we should have better food products. We should have better seeds for agriculture. So at the end of the day, the consideration, the question that the courts always ask is whatever the law might be. Would it at the end be better or worse for the common person of India? And if the answer is no, then irrespective of what the law says, irrespective of what the legislature says, irrespective of what a big company, a big pharma company from West says, the answer for the court will have to be no. So that’s What you just said, that is that test is what the judiciary applies. Yeah, it’s not a judicial test. It’s essentially a derivative, an impli sorry, a sort of an implication of the public interest test that ultimately it has to be beneficial for the public. A patent is a negotiation where an invention is disclosed. And only to the, so for example, our judiciary is very clear on the fact that I remember one discussion we were having in Oxford is that the pre grand disclosure is something that is being discussed in the West, especially I believe in Germany itself. However, in India, it’s a very clear position that if you have not disclosed something previously, then you are absolutely not entitled to get any patent rights with regards to it. And Because it’s a negotiation. You disclose an invention to the public and they grant you a monopoly for a limited period of time. So we look at our patent law in a very public centric manner. We don’t look at it in a private centric manner at all. And that of course is at odds with a lot of the Western companies that dedicate in India. Yes. Ideologically and financially. Yes. But that’s also important to know, both when you market products there and when you go to litigation and you, would you say that test is rather strictly applied and regularly applied? Or is that something that is more in the background? Because in Germany we also have rather recently added a provision that if, if there’s like a, I think if you, if there’s a very strong public interest in something, then you might not come to the conclusion that there has been an infringement. And I think one of the cases that was about this was about a some drug on, I think, hepatitis C. And the question was if if we discontinue this I don’t know if it was a biosimilar or generic, but if this is being discontinued, then there are a lot of patients who don’t get their medicine and they can’t just switch to another brand because it was probably biological then it wasn’t just a simple swap. And so that would seriously put them at risk for, in terms of their prolonged treatment. And even in that case, the German judiciary said, no forget it. It’s not the criterion is not met. So that is something that in Germany there, as far as I know, there haven’t been any cases or maybe not many where this public interest has been considered. even though it’s been incorporated into the law. But what about these, the strictness or the prevalence of this in India? It’s, in my opinion, I think I can be corrected on this, but in my opinion, it’s a last resort as well as a background measure. It’s something that runs at the background of everything, but it’s utilized and invoked as a ground only when everything else has been invoked. Okay. I think that’s a very important disclaimer because a large portion of our discussion is revolved around exceptions. So the law is still prevalent. So I’d say the quantum in which these exceptions, especially the public interest exception is applied is higher than that of Germany and other countries. And that’s why India can set to be an outlier. But I really think that in a majority of patent litigation, India is like any other country is trying to enforce. The rights of the patentee and ensuring a balance between innovation and public interest. Very interesting. Very cool. That would be a fantastic final point of our discussion, unless of course you have further topics you would like to discuss, because I understand you have done an incredible job of not only researching this very well, but also researching it while being engaged in a lot of other academic pursuits. So I’m incredibly impressed, of course, but On the other hand, that’s, how I met you guys at the Oxford IP Moot Court. But is there anything else you would like to discuss? Not for me, personally. I think if we can start, we’ll never stop it. Yeah, I think that’ll be a good background. I hope the things we provide to the readers in terms of the sources we have or the research we’ve done, yeah, that can be helpful. I think anyone listening to this can have a long table conversation with anyone about Indian patent litigation now. Wonderful. And we’ll provide everything in the show notes that we talked about that people can read up on. And thank you so much for being here. Okay. Thank you so much guys for being available. And yeah, I it’s a lot of fun and I’m very honored that you chose to take time and to prepare so well, and there’s going to be two amazing episodes. Thank you so much for having us. Yeah. Thank you. Awesome. It’s really interesting to see somebody interested in Indian Patent Law and be so open to work. To take a student’s perspective of that is also honoring. Oh, I don’t really, I didn’t I didn’t really think about you as students when I wrote you and I don’t really see you as students in terms of, I would have never been able to do this. When I was a law student in that level, like you, like I see you actually as I would see colleagues and, but really good colleagues, because you have an incredible amount of understanding and of knowledge. And so I don’t think anybody listening to this will necessarily think, Oh, those are obviously students. I’m not at all. I think so. Yeah. You’re clearly. Going places. And this is just I’ll be honored to be able to say that once do something even more amazing in the future. Oh they won my podcast first. . What? Everyone else wants to speak to you. Thank you. Yeah, you can. Yeah. . . Yeah. Thanks so much. There’s more than. Thank you so much. All right. Have a great Sunday. And yeah, good luck with the dress up stuff. Fingers crossed. Thank you. Thank you so much. Thank, I’ll keep you in loop. We’ll de talk to you. Okay. Of course. Yeah, I’m happy. Yeah. Yeah, absolutely. Thank you. Thank you so much. All right. Take care. Bye-Bye. Thanks so much for tuning in today. If you enjoyed this episode of IP Talks, be sure to check out our other episodes and subscribe to the podcast on your favorite platform, whether it’s Apple Podcasts, Spotify, Google Podcasts, or wherever you listen, and don’t forget to follow us for updates and new releases. We really appreciate your support and we’ll catch you in the next one. Bye.

12. 

    11 Oct 2024

    #2 – The Indian Approach to IP – Part 1/2 (Suryansh Singh & Manja Gupta – Season 1 – Episode 2)

    Summary In this episode of IP Talks, host Jan welcomes Suryansh Singh and Manya Gupta, distinguished law students from the National Law University in New Delhi, to explore intellectual property rights in India with a focus on the patent system. The discussion spans India’s historical patent practices, its journey towards TRIPS compliance, and the unique Section 3D provision that prevents evergreening, impacting international pharmaceutical companies. The guests delve into landmark cases and the patent litigation landscape while offering perspectives on the generic drug market and India’s approach to healthcare. This conversation provides a nuanced understanding of the challenges and advancements in India’s IP regime, especially concerning pharmaceutical rights and access to medication. Show Notes Overview of the Indian Patent System published by WIPO: https://www.wipo.int/patent-judicial-guide/en/full-guide/india (https://www.wipo.int/patent-judicial-guide/en/full-guide/india) WIPO article „Strong IP laws prevent so-called “evergreening” of patents to enhance access to TB drugs in India“: https://www.wipo.int/web/global-health/w/news/2023/news_0023 (https://www.wipo.int/web/global-health/w/news/2023/news_0023) Transcript Disclaimer, the views, opinions, and statements expressed by the hosts and guests on this podcast are entirely their own and do not represent the views of their employers or any affiliated organizations. Additionally, the content shared on this podcast is for informational purposes only. and does not constitute legal advice. For any legal matters, listeners should consult a qualified attorney or legal professional to receive advice tailored to their specific situation. IP Talks is a Jan-Willem Prügel production, all rights reserved. Welcome to IP talks, the world’s greatest private podcasts and all things. Intellectual property. In this episode, we are joined by two distinguished guests, Sodi and sing. And Manya Gupta. Distinguished law students from the national law university in new Delhi. I met them both at this year’s Oxford IP mood court, where they and their team delivered a stellar performance. So much. So in fact that I knew they would make fantastic guests. As you will see, they proved me. Right. In this episode, we dive deep into the fascinating world of intellectual property rights in India, discussing how the Indian patent system operates the historic backdrop of generic medicines and the nation’s Rocky history of compliance. With international agreements, like the trips agreement. Throughout the episode, we explore landmark cases and regulatory provisions, like the infamous section 3-d, which aims to prevent evergreening and has been the bane. Of many Western pharmaceutical companies. We also delve into the generic medicines in India and touch upon the complexities and fitnessy of the Indian patent litigation system. Stay tuned for an engaging conversation filled with expert insights that shed light. On some of the most pressing issues and intellectual property law today. So without further ado. Please enjoy this episode with Syria. And Manya. Welcome to IP Talks, the world’s greatest private podcast on all things intellectual property, starring some of the world’s leading IP practitioners and your host, Jan Willem Prügel. You’re in for a treat. Enjoy. Thank you both for coming today. And I’m very excited that you could make the time. Today we have many topics to discuss. So I welcome you both surgeons and manya from India. Before we get started into the depth of the podcast, I would briefly like you both to introduce yourselves. Maybe we go ladies first and manya, if you could briefly say some words about yourself. Sure. So hello, Jan. I’m Mania and I’m currently in my fourth year at, I’m a law student at the National Law University at New Delhi. My connection with IP has obviously been in my tenure as a law student. where I just found it interesting because it lied at the conflicts of commercial laws and public laws. And that’s why I got interested in it and then started exploring it. Thank you so much. Thank you. Okay. Good afternoon. I am Suryansh. I am also a law student. I am currently National University Delhi as well in my fourth year. And as Marnia said, the general conflux that IP has with respect to private dispute resolution and public dispute resolution is quite interesting. However, my primary interaction with IP was through the Oxford international IP mode, which both Marna and I did. And I believe that’s how we came across as well as you were one of us. And yeah, that I believe that was the primary source of my interest and in the future as well, I believe. IP is as we discuss a huge source of civil litigation in India and irrespective of which field you’re practicing in, to some extent it manages to swoop in. Our interest stems from that as well to the extent at which it operates in India. Yes, so essentially that. Perfect. You guys also told me once in Oxford that the university that you go to isn’t just any university, but it’s actually quite difficult to enter. Can you shed some light on that process? Because I was just wondering because a lot of people might not know about this. So we went through the process four years ago. So yeah, fond memories there. But. So our university is a part of this group of institutions in India that are called National Law Universities. They’re funded by the government, they’re run by the government. And there’s a huge entrance test, the entrance test that you hear in Asia that are a prerequisite to entering universities. So that’s supposed to be hard. And over 80, 000 people in India take it. And 80, 000? Yes. Wow. And we expect the numbers to increase. Yeah. Oh, okay. Yeah. So and probably there are less than 80, 000 spots available, I assume. There are about 47 seats or spots. Wow. And it’s all on the basis of a two hour or a one and a half hour test. So essentially it requires you to put in a lot of hours that, but I’m, whether or not that system itself should stand is something that is contestable. But one thing that I believe all of us agree with is that in a country as broad as India, it is not possible to conduct a personalized, customized and entry level examination system in order to avoid which we have an objective. test. Now whether it filters in the best way possible is up for contestation, but that’s how it works. So is it probable that most of the judges and senior members, the legal profession come from your school then, or is it more mixed? So it’s a group of over 13 colleges. And the first college, in fact, was started in sometime in the nineties. I believe it’s at Bangalore right now. And a lot of people of the legal profession do come from there. But I really think that India’s legal community is very diverse. It has people from a lot of states and a lot of legal systems. And a lot of them are from different colleges as well. So you have Delhi university over here, which is a regional university. And then you also have some government law colleges over at a lot of states, which have produced excellent legal people. Yeah. Oh, sorry. Go ahead. Now I was just stating that as Manya mentioned the legal fraternity itself. is way older than the concept of NLUs or any other colleges for that matter. So we have a lot of diversity and we have a lot of sources from which our lawyers, I believe, come from. I see. Are you both in Delhi right now? Is that safe to assume? All right. Great to have you here through the magic of the internet. And so we will speak today both about the general structure of the IP space in India and the patent litigation space, which a lot of people. listening to this probably have very little idea about, certainly me, even though you gave me some great reading material that I really enjoyed. And so I would like to start to first discuss the basic structures of the system, a patent litigation system in India, and then move on to something that I find personally very interesting, which is how the generics are treated in India and the stories around that, but we’ll get there. So we will first now discuss a little bit about the India patent litigation system. I believe Mania, you wanted to start with this ? Sure. I can start with, so the patent litigation system in India or the IPR system in India is being a common law country is regulated by an act. It’s called the Indian patents act. And I think Germany has a similar one. And that encompasses the entirety of what is a patent? How can it be granted? What are the infringements to a patent? And that’s the core document. out of which patent disputes arise in India. Suryansh, if you have anything to add. Yeah. So yeah, the Patents Act that we currently have was, I believe came in 1970 and it was, it succeeded an original act of 1911. And between that was a very important epoch in our history, which was independence essentially. Indian patent law in that regard must be understood to some extent by our social context of colonization and other things. Our Pre Colonization Act, which was the Patents and Designs Act 1911, was quite liberal. In fact, it was one of the most, it was the one of the most patentee friendly litigation of that time. And was introduced by the the British kingdom at that time. However, in the late 1950s, there were a number of committee reports. I won’t bore any of the listeners with the names, but the crux of those reports were the, that the society that India is. cannot sustain a heavy patent litigation system because we need our medicines. We need our food items. We need various things where we need various consumables because of which the 1970 act was introduced as a more conservative system. So yeah, I think Mania can shed light on what exactly did for it to be called conservative by our standards today. So the 1970 act, which came after independence, it was widely seen to be a very nationalist piece of litigation in a sense, because in India had the compound was government. We’ve had them ruling for over quite some time since 1947. And what they created was essentially a way to appease the public and guarantee rights to medicines, guarantee rights to food. And in short, that India as a country has space to develop rather than just granting IP rights to companies and corporations. Because from the time period of independence and particularly after 1970, between 1970 and 1990, we had liberalization. Which happened in 1991. Every foreign corporation essentially turned into India and there was just a massive inflow of products that we were not ready for. And by, by liberation, sorry what exactly does that entail? Liberalization. Oh yeah, okay. So economic liberalization consisted of, so earlier in India, business was very difficult to do. Everything was almost controlled by the government. Everything was nationalized. And then you had Prime Minister Singh introducing in 1991, the concept of economic liberalization, which made business more in the hands of private players. It removed barriers to business. And most importantly, it allowed foreign companies to come into India and do business. It removed a lot of it removed a lot of red tapes as India’s system is called and made business easier to do. So that was when the Indian patent act started facing a lot of criticism because it did not evolve as other patent acts in certain other countries evolved. It still had considerations of protecting medicine, protecting India’s generic medicines regime. It did not allow product patents for medicines. It only allowed processed patents. It also had a lot of food. It also provided for agricultural protections and it provided for the safety so that India has space to develop. So that has seen a lot of mixed reactions and a lot of countries opposed it, but India internally internalized it as a system that it was supposed to have. Yeah, essentially. And in addition to that, it even gave a lot of power to the government to take any invention and claim it as its own, essentially creating a deemed fiction that the inventor was the government. And they required to pay no loyalty or anything for that. For that matter, even the process patent that was granted for drugs was only valid for about six or seven years, I believe in seven years. Yes. So that’s a very short period of time. As we all know that much of time is required for the marketing of drugs itself. And that regime essentially was. Criticize at least externally heavily, but it must be looked at in the context of in the context of the very big struggle that India was going on between that was going on across the world between socialism and capitalism and India at that time was heavily tilted towards capitalism. towards being socialist as it was required at that time. However, in 1991, as Manya already stated, there was liberalization, introduction of liberalism, which essentially almost made it necessary that our patent act was compliant, which followed the most important incident in, I believe in this entire saga, which was the introduction of TRIPS in 1995. And we were one of the founding signatories, if I’m not wrong, Manya, right? Yeah, we were one of the founding committees. And for developed and for developing and underdeveloped countries, there was an exemption within TRIPS, an extension of five years to be TRIPS compliant. Can you briefly tell us what TRIPS is for anyone who might not know? Yeah, thank you so much for pointing that out. So TRIPS or the agreement on trade and related aspects of intellectual property rights. is a subset or a sub agreement of the World Trade Organization, essentially an attempt to to universalize a standard, the standards of global trade. Now the WTO essentially brought a number of regulations and standards in order to do that, which includes the TRIPS agreement, the TRIMS agreement, TRIMS is for investments, and The TRIPS specifically introduced a number of minimum standards that the signatories must comply with. Now, if supposedly I am a person who is a, I’m a country, which is a signatory to the TRIPS agreement, I am bound to grant patent, To certain medicines or certain goods, as long as they meet the requirement mentioned in the TRIPS agreement. And that essentially was an attempt to universalize patent laws or intellectual property laws in 1995. Up until 1995, everything was going really well for India. because it had its own patent laws and it wasn’t really being criticized. The real problem came when India became part of the WTO in 90, when it was created in 1995. And then the TRIPS Agreement came and India did not really comply with the standards of the TRIPS Agreement. Because of what we just discussed, it did not have product patents, it did not recognize patents which had been granted in other countries. So essentially if a patent was granted in the U. S. based on conditions laid out in the TRIPS agreement, the U. S. has now space to criticize India because it’s not following the TRIPS agreement and granting a patent to say, hypothetically say that medicine. So then India came and then the Patents Act was amended finally after huge internal debate and discussion in our parliament for India to become TRIPS compliant. Now this was criticized internally in India, but it was appreciated universally outside and the debate become, became whether do we protect our insider, whether do we protect insiders as in domestic companies or do we protect outsiders? And the 1999 amendment. to the Indian Patents Act came out as a balancing instrument between India following trips and India also protecting its own industry. I wonder, but is, was India’s own industry, certainly in, in pharmaceuticals was it only generics or did there, were there also innovators that had own developments of drugs because they would have been opposed to a weak patent law as well? So India certainly does innovate, but the kind of innovation India does is very little in terms of jobs. I see. India is called the global medicine supplier of the world. It’s called the pharmaceutical basket of the world. So India is still, to this date, specializes in providing generic medicines. Our innovation in national drugs or in or in our own drugs is relatively very little. So it still continues to thrive on generics as its main exporter. Thank you. That’s very important to know because then it makes a lot more sense why this would be so opposed because similarly, even though there are some generics in Germany as well and other countries there would also be always a lobby for the big innovators that would want a strong patent law, but that’s very important and interesting to know that there is a less of a balance in India at that time. So thank you. A very interesting point is still that. Even the companies that innovate medicine, medicines in India, they are themselves the producers of generic medicines. So largely the lobby was just of those companies saying that we need to protect the thing that gets us money, which is their generic exports rather than them innovating. So in a way it can be criticized because What generic medicines do is they prevent India from innovating in medicines itself. But then again, the companies don’t really have the scope to innovate because they’re getting their money from genetics. So that’s an interesting something that we can consider. Yeah. And So essentially it also must be looked at as the difficulty that India faces in shifting from develop from a manufacturer to a developer. And essentially that’s it’s not just India’s problem. Actually, the entire world will be significantly heard if that happens. Because if. Just to highlight one incident AstraZeneca was innovated within UK. And it was developed as a drug within UK. However, the largest source of export of AstraZeneca, including inside UK was from India because of the fact that our manufacturing capacity is so huge that we essentially promote, we obviously created a version of it within India and promoted it. In consonance with AstraZeneca and essentially helped about, I believe 4 billion units of those vaccines were exported. If I’m not wrong, I might be incorrect about this number, but if I’m not wrong, a number the cumulative number of vaccines manufactured, including inside and outside India, including for purposes inside and outside India was 4 billion, which is a significantly huge number. None the issue that happens is that. Manufacturing industry requires itself to be extremely big because we need medicines for about 1. 2 billion people. Yeah, essentially, I’ll be a bit liberal with the number. I’ll be a bit liberal with the number I use here because I don’t have the exact figure, but the number was around 4 billion. And as I was stating that not only India itself, but also the world cannot afford India to be to be more developer friendly rather than manufacturer friendly, because everyone requires the drugs that India manufactures at this India itself requires the drugs it manufactures. At the same time, a regime can either be tilted towards the manufacturer or the developer. While most of our, the regime itself is tilted towards the manufacturer that’s there. That’s that’s not a strange fact. However, the bigger issue that arises in India is that at the ground level, that is to say at the fundamental level of pharmaceuticals, the studies are also mostly focused in manufacturing. That is pharmaceutical engineering. And industrial pharmaceutical manufacturing rather than research and development, and that is basically basic research into pharmaceutical sciences is very scarce in India, and it’s not a study that people usually pursue when it comes to medical. Because of this on a fundamental level, it is very difficult for India to shift to a developing country or rather develop a friendly country and on a political level as well, it is not desirable for India itself and for countries outside India for India to shift. But as students, we all have a glimmer of hope that someday maybe. To an extent, people will start following or people will start to get interested in how these drugs are manufactured in the first instance, and instead of creating generic versions or tilting regimes to be friendly towards that, we will be developing more of our drugs ourselves. rather than importing them or rather than manufacturing them. That an example of that is the other drug that India manufactured. I believe a billion of those were also made, the Covaxin. So that was purely manufactured in India. We hope that more of that can happen in the future. Just one thing I’ll add here, and it might not even be related to intellectual property rights, but the way India manufactures generic medicines, it primarily goes to either Africa or it also is exported to Europe and other countries. But the laws relating to those exports of purely drugs are very uncertain. So we have something called the director general for the country for the control of drugs. And a recent incident happened where in Indian cough syrups were sent to Africa and they ended up poisoning half the kids that consume them. Really? Yeah. So in terms of, Even looking beyond IPRs, India needs to streamline its system in genetics and it has a lot more work to do. So what was, so it was some kind of drug that poisoned Africans? So it’s a, so it was a cough syrup. Oh, cough syrup. Oh, isn’t that part of a drug epidemic? Aren’t they using that to get high in some countries? Cough syrup? Yeah, but I don’t think that was included in, I don’t think it was that particular cough syrup. I see. So what ended up happening is, it got the export approval, while it was not itself approved in India. So it was a really contorted process where in the manufacturer essentially could export it, even if it had not received a domestic license to be consumed. Was that an oversight or was that, The Indian regulator claims it was an oversight, but it’s really because India has a state law and then a central drug regulator and a state drug regulator. So they have a lot of overlapping jurisdictions and certain in spite of the overlap, certain things get left out of those laws. It’s a lot, it’s paradise. There are way too many conflicting laws to argue on and way too many forums to go to. Yeah. Coming back to, yeah. Jan, you were mentioning something? No, I was just exactly asking. About the next steps in the development of the patent litigation system in India. Absolutely. Coming back. Go on. So I was just mentioning, I believe, what Manya would have also mentioned, the, finally, there were two cases within the WTO. So just a bit more context for that. The WTO has a two tier dispute resolution structure, one at the panel level and the other at the applet body level. Both of them in two separate cases ruled against us. One filed by the U S and the other filed by the, by European community, I believe so essentially in 1997 and 1999, we had two international judgments against us. A number of Western countries were expecting us to conform to our international obligations. All of which led to the passage of two new amendments in 2002 and 2005, which finally made our act much more compliant to TRIPS. With a small asterisk at the top. So we had certain caveats included and we had certain exemptions. I believe I, it’s not relevant to discuss all of them, but a couple of them that can be discussed is the compulsory licensing mechanism in India, which is relatively more liberal as compared to anywhere else, especially the West in the world, and a provision called section three D, which It essentially prohibits evergreening in India. I believe Mania can shed more light on this. Perfect. And before, and while you explain this also maybe briefly explain what, whatever greening is, what somebody not involved in the pharma space might be familiar with. So I think I think most of us could be familiar with something called the Doha Declaration, which came shortly after TRIPS. And what it did was it was essentially seen as a victory for developing countries. Because what it said was that countries would interpret the TRIPS agreement to support public health for their own citizens. So that allowed India to use its patent act in such manner and justify the asterisks, which Suryansh mentioned as lying within the Doha declaration that everything we are doing to support access to public medicines for all. So what India did then is rather than developing its patent act, it developed its jurisprudence. through cases, through the use of clauses in the app to support its own interpretations of the law. So one of the most contested cases, and I think one of the most landmark cases, I think it’s the first case we are taught when we do the IPR course, is that of Novartis, which dealt with this phenomena called evergreening. So evergreening is a process wherein drug companies, they enhance the drugs they’ve already made, and then they get a new patent for it. So essentially you make a drug, the patent for that expires, and then you add a slight modification to the drug, that you mark it as a new drug entirely, and then you can get another patent on it. So yeah, you were saying something. Very good. I was just breathing in, but that’s your mood cord experience. So I was just wondering, do you have any example for such a slight modification? So one of the modifications that came in the case of Novartis was about a There was a certain, or in another case, in fact, there was a drug called Tarsiva, which is used to cure lung cell cancer, I think. And it was marketed and then at the time of expiry of its patent, this is not the Novartis case, this is another case, maybe the Roche case, but yeah. And then the Indian manufacturer Cipla came up with another drug similar to it, but its composition was a little different. But then what the original company did was it tried to modify the drug a little bit and state that, oh, we have created a new drug altogether. So this was also what happened in the Novartis case where a drug called Imatinib was introduced. And what the Indian court observed was the manufacturer had increased its efficacy by changing the proportions of the base chemicals used in the drug. And then they were trying to market it as a new drug in India specifically, and trying to get a patent for it. So the Novartis case went through four rounds of litigation, as we will discuss in India, litigation can be at several levels and in several forms. So it first went to the Delhi High Court, when there was an opposition filed to the grant of the patent by CIPLA. which is trying to make a generic medicine to sell in the Indian market of that particular drug. The Delhi High Court rejected Novartis application for the evergreen drug. Then the case eventually went to the Indian Supreme Court, where the Supreme Court upheld the observations of the Delhi High Court and held that in order to have a new patent, it must not, it must conform to the requirements of patents in India, and that cannot have evergreening in it. So the thing that you produce must be a substantially new product and you can’t have an argument where you say that improving the efficacy of a drug leads to the creation of a new drug, even if you have maybe added a new material in it. So that is what led to intense round of debates internationally about how India really protects developers or innovators of medicine. Yeah. I believe something we can discuss further with regards to that. Is how does the provision section 3D operate? So as Mania mentioned evergreening is first of all something that is not very uncommon. I believe if I am to give an example, paracetamol drugs nowadays, if we, Jan, are you aware of paracetamol as a drug? Yes. Unfortunately, because I usually take it when I’m sick. Yeah. But if you take any paracetamol drug, it will hardly be just paracetamol. It will be some other drug mixed with that in a very small quantity, which can be either for body ache. Paracetamol is generally only for fever, but the additional drugs can be for body ache, for cold or for similar things that accompany fever. And this was a very common strategy that was adopted initially to create a very small To add a very small quantity of some other drug to create a small mixture in order to, in order for the patent to get renewed and a new manufacturer to not be able to make the original drug and the new drug. So this essentially kept on happening. And this was a concern that was raised by multiple committees in India because of which section 3d, as I said, was introduced. Now section 3d essentially says that something cannot be granted a patent. Until and unless it a, whether it’s a product patent or a process patent, until and unless it either significantly leads to the efficacy of an already existing product, or it creates a new product altogether. So essentially this efficacy and new product standard is a completely new standard introduced by India. On the other hand, in the international regime, now this is where it becomes problematic content contentious we may call it whatever you want to, but the way it becomes contentious is that the TRIPS agreement says that it is required for a country to at least provide a patent application to any product that is new, includes an inventive step, Is capable of industrial application. So there are three there are three criteria. Those three criteria are imported within our legislation as well. Now, this additional criteria of ex of a efficacy or a new product is something that we suggest is a trips plus provision. A trips plus provision is one that gives protection beyond what trips already gives. But many Western companies suggest that it’s a TRIPS minus provision that it adds an additional requirement upon the patenting. Now there’s been, as Mania mentioned, there has been debate going on and on for a very long time, but for the purposes of our domestic application, the law is very settled for us that evergreening is not allowed in India, you cannot get a patent, which is genuine, generally not appreciated by Western companies, because their argument, to some extent, logically is that once a patent is indeed granted, and it is disclosed in the public, At least seven to eight years are required to essentially market in a market like India. And of the 20 years that are available, if seven to eight years are gone in that, then the 20 years in fact is a very less, is a very small number. So that’s the general rationale of the Western companies. But now the debate goes on and on and I don’t think nobody, anybody has a conclusive answer to that. Patent applications have been denied based on this provision already because, so it’s not just on paper, but it’s actually being enforced as well. Very much so the problem with it is that what companies basically state with India having TRIPS plus and minus provisions is that the court could have said that now a patent requirement is you have to create a new product as per the TRIPS agreement and as per the patent act. So what companies argue is what was there, why was there a need to have a separate exception in the form of a provision like Section 3D? Why couldn’t the court do it through the definition of new? And what companies state is that this essentially means that the court can slap 3D into any application for evergreening without even going into the merits. of evergreening or examining it within conventional jurisprudence on the term new as used in patent acts across the world. So that is something that is present a lot of other provisions in Indian law, which are deemed by companies to be patent restricting in under the veil of being trips plus provisions or under the veil of simply being India protecting provisions. That’s a very good point. Even for that matter if I am to give an example, for example a number of vaccines are said to when they’re introduced at the introductory stage, they are said to have certain difficulties, certain harms. For in my personal experience, COVID, the COVID vaccines, essentially almost mandatorily followed a day or two of fever to the person who took the vaccine and there were claims as to certain vaccines that were able to, vaccinate a person with COVID against COVID without a similar fever or body ache or similar things. But in India, that vaccine with an additional with an additional sort of plus point. Will not be patentable because it’s just an adjustment. It’s just an improvement. Improvements in India are not patentable at all. The only thing that’s patentable is if you significantly increase the efficacy, as I stated, and that test itself is very, is a higher threshold is a very contentious threshold to meet because significantly increasing the efficacy cannot include improvements, cannot includes debugging. It can only include almost recreating a product from scratch. And essentially, you have a court without scientific experts or patent experts deciding what. such an ambiguous term such a significant threshold is. So that also poses a problem for a lot of companies. When was this introduced again? Can you remind me? 2005 2005. Okay, so it’s been around for a bit. Yeah, so same time. Yeah, it was a compensatory clause. Essentially, we introduced, we removed a lot of incompliant things from our legislation. And this was a breaking point of the negotiation that we cannot have evergreening in India, which is why this is a provision which must exist. Interesting. Very interesting. I personally haven’t heard of any country that has a similar provision to 3D, but there are many countries that are, that lack TRIPS compliance itself. I believe many countries, including in Africa and And some other countries in different jurisdictions have other exemptions because of being underdeveloped due to which they claim similar exemptions. But I don’t think any country has a similar provision to 3D because otherwise it would have come up at some point during the argument. I think now that I’ve done a quick research on this, I think some countries, including surprisingly Australia, and Canada have had not exactly provisions, but jurisprudence developments in the form of cases, but it’s never been as strictly applied as it’s in India, because in India, this word significant improvement creates a lot of playground for the court to simply say no. There’s even been cases where in Indian courts have assessed the price of a drug, the price of the original drug versus the price of a generic drug and said that in public interest, we are supposed to interpret it. as not being a significant improvement. So I think the way it’s used in India is unique. Yeah. Interesting. All right. So that was an interesting meandering into that area. Did you want to discuss the general patent litigation system some more? Or what would you like to talk about next? Certainly, I believe that is something we could discuss how the litigation system itself works. And we could delve a bit into the enforcement part of it as well, which will also bring very interesting international case laws we India has with the European community. Before that, I’ll just quickly Like for the convenience sum up the entirety of the generic, how it works is that. Initially, first of all, during the time the patent exists, we have a 107A, that is the BOLAR exemption within the Patent Act, which essentially works to allow companies to research on certain drugs while they’re still patented. It does not go so far as to allow them to commercially use it, but just research on it so that immediately after the patent expires, they can introduce generic drugs. After that, the patent expires. After that, the provision of 3D kicks in and the patent cannot be evergreen, essentially renewed. And after that, the generic drugs are introduced into the market. They’re exported into other countries. And after that, the enforcement issues begin, which we can discuss now. Perfect. Just briefly. Oh, sorry. Sorry. Just very briefly before we move on from that. What is it? So is I, how does the, I don’t know if you’ve ever researched that, but the if you with the healthcare system is, are generic drugs being reimbursed by statutory health funds, sick funds, or is there like a price reimbursement and pricing list or anything of that sort? I think generic drugs are extensively promoted in India. In fact, so that we have the medical guidelines, which actually mandate that doctors can only prescribe generic medicines. Oh, interesting. It’s up to the consumers which drug they actually buy. They can buy the most expensive form of the original drug, but they can also buy generic drugs. And especially with the coming of another government in 2014, we’ve had the introduction of several clinics and several and several pharmacies that exclusively sell generic drugs. They don’t sell the original name drug, rather they sell the generic version of it. So in fact, a very interesting phenomenon, which I can tell from personal experiences, I had to get some, I had to get a drug from my grandmother and it was too expensive for us, especially to buy for one year straight. So a lot of websites in India just tell you the base chemical of that drug and they actually tell you what the substitutes are to this drug and the price of those substitutes. So it’s pretty much forum shopping because you can go and just tell the chemist that you want this form of the drug and they’ll give it to you very easily. I see. And is there a system where you pay a health insurance and then you can ask them to reimburse you and then they would only reimburse generic drugs and never originals? So a little bit about that. I believe so the health insurance in India essentially is very significantly a private affair, different companies run it. And it depends on their terms and conditions as to what they cover and what they do not. But I must add here that for the population that subsist in India, the healthcare system that we have is significantly impressive. Like Genuinely impressive because we essentially at medical at public hospitals, which are plenty in number, especially in cities, if not that much in rural areas have to pay about If I’m to, I should speak in euros. So we have to pay essentially. You can use dollars or rupees, whatever. Yeah. We have to pay essentially 10 cents for consultation and the medicines are generally free until and unless you have to be admitted, in which case you have to pay about 2 a night. And you get access to this if you are an Indian citizen, I assume. Yes, that’s it. That’s all that you’re required to do. And essentially the system itself prevents itself from collapsing because in, and that is why generic drugs themselves are promoted to that extent. The biggest purchaser of generic drugs would, in most cases, in most states, be the government. Yes. The government and the public hospitals. And then after that, as Manya said, the laws are also significantly in promotion of that. It’s required of the doctors that if they are not allowed to mention the name of the brand, but only the name of the salt that they want, or rather the drug that they want the patient to purchase. So yeah, the laws are significantly tilted towards a generic friendly healthcare system. I think we even have something similar to Germany where we have the essential commodities act, which means that in case of an emergency, one of them was COVID and other of them is local emergencies like epidemics or local diseases where the government can sanction any drug. The manufacturer has to mandatorily license that drug. And sell it at a price that the government decides just so it’s easier for the public to access it. Now it’s not as rosy as we’ve made it sound because there are frequent problems of access in those government hospitals, sometimes you just don’t get beds. In COVID, there was a huge problem of the lack of beds in India. We have essentially one doctor for 30 lakhs population. So that’s the proportion. And it’s quite a sad number, but yeah. You said 30, 30 lakhs, right? Yeah. Oh, I think it’s one doctor per 30 lakh of the population. That’s 3 million. A million. Okay. Because I’ve read that before. And I’ve I know I looked it up once and then I forgot. So 30 million. Okay. Yeah. 3 million. Oh, okay. Sorry. And that’s not quite a good number here. It’s impressive. Yeah. That, that’s where we will have we will be a slightly at crossroads because I believe That that I believe that it’s very difficult to maintain healthcare for a system where in 80, like that’s 0. 8 billion people falling below poverty line and given the fact, so I’m, my awareness of how COVID was dealt with in multiple countries only comes from news and other sources, right? And I’m not sure about Europe that much, but as far as I, my awareness goes, Of the richest countries in the world, like us the situation was extremely dire and for a country like ours, where at one point we had about I’m not sure how, what will convert to, but about 200 million patients in a day. Yeah. No, that’s not 200, 20 million people, right? Two girls between, so about 20 million people. Who were patients of COVID in a single day. There was a point at which we reached that stage. Then to the collapse was not as bad as certain other countries. So I believe that while the resources are scarce, they are still supportive of what they’re still inclined towards what the population requires. Yeah, absolutely. I remember very vividly that India was way punching way above its weight as the, at least as people would have expected it in terms of how they dealt with the emergencies of the COVID pandemic, especially, I think they had some contract tracing. as well that was very sophisticated and they developed many methods that were quite impressive. Absolutely. So it goes to show that there are some great ideas floating around and some very capable people, some of which I’m speaking to right now. Yeah, we are the ones who actually block all of this because we are, we create bottlenecks by bringing in a number of laws, but the medical professional and personnel genuinely have to have a lot of respect in India because of how much they deal with almost every single day. Sorry. So for having taken you off track. Yeah, you were talking about the patent litigation system, but go ahead. I don’t want to box you in. Before we proceed to the litigation part, I think it’s really, I think it’d really be good for both me and Suryanshu to hear your views on what does coming from a European perspective, what we think it’s a mix of good and bad about Indian genetics and our genetics regime. But what do you, what would you say about coming from a European perspective on it? I’m always a fan of not having too much of an opinion if I don’t really know what I’m talking about. And one of the reasons to remove some of my ignorance was to have you guys on to actually learn more about the situation as it’s going on in India. There is a narrative, of course, a very simplified narrative in I would say, I can only say in Germany, I’m not sure what the narrative in other countries is that there are other countries, particularly India, who do not respect the hard work and all the innovation that some of the originators put in to developing medicines. And they’re just basically ripping them off and then copying them and then pushing them out all over the world. And especially in India, and they’re not paying for it. And so that’s terrible blow to their businesses. But because I, and that’s why I’m so interested in getting your view and your opinion on this. And I can very much. understand the situation better now because of the historical development of the generics industries in India and the necessity for a government to actually take care of its people, because that might be, or should be its first mandate to make sure that people are not dying of diseases. And then of course, Laws must be respected and property laws even more some might say but it’s certainly they must be dealt with. And I think the important thing is that India has shown that it’s open to to discussion and negotiations with other countries and has done, as you’ve outlined, had great strides in improving the relationship with other countries and being more TRIPS compliant. And I believe that is a strong indication to the rest of the world that it’s to be taken very seriously as a major player in the global pharmaceutical game. And as you say it’s, I hadn’t heard put a phrase quite like that, that you said, it’s the pharmaceutical basket of the world. But that makes a lot of sense and immediately rings true. And I think any global policy on how to deal with patents and in the pharmaceutical space, but also probably in other areas needs necessarily to include India. in the future because it’s just so important. It’s becoming ever more important. And we’ve seen in recent developments, as we just discussed during the pandemic, that it’s highly competent in certain areas. And it’s certainly increasing its abilities ever more. So I’m very interested in the further developments and also even more interested in learning some more about the structures of patent litigation in general, which I believe we May hear from you now, even more, but who wants to go first or does that answer your question? Even, or do you have would you, what’s your take? I think I think we can end this part of the segment on something very important that you pointed out, which is, I think the world can look at India’s perspective, not from a point of maybe companies ripping off, original creators of drugs, but rather from a necessity perspective, which is that if India doesn’t do it, then simply more than half, maybe even me would not be able to afford medicines priced at the price that innovators of drugs are pricing them at, because it’s not disputed that even they price drugs really high, much higher than what it costs to manufacture them, which is obvious coming from a profit perspective. But the Indian perspective simply is that it is necessary. For us to have generic medicines enabled to ensure that more than 90 percent of the Indian population have access to drugs. Yes. And I will add some of the originators would say, of course, that there would be no medicines at all if they weren’t putting in the money and all the manpower and the time and technology to innovate and to create new solutions for pathological problems that the world is facing. So there would be nothing to copy if they didn’t do their work. And so there should be some. in some incentive to innovate and the only way to safeguard this or one of the best ways to safeguard this would certainly be property rights and monopoly rights in the forms of patents. So there’s certainly not just greed at play because and Of course Article 3D is of a strong as we would say in German, sort, a sharp sort in terms of legislation, because, you can argue, as you pointed out earlier, there is an improvement. You can make improvements and some people just call it evergreening. And that sort of shuts down the conversation and they say you’re just evergreening. What are you talking about? And then people have this in their mind that they’re doing some sort of evil scheme rather than maybe they are improving the drug and maybe, they’re common, Example, examples like reduced forms of injection or dosage lower dosages. For example, where you, if you’re injecting a drug, you sometimes don’t have to inject it every day anymore. You just inject it once a week, or you sometimes inject something with a needle and then somebody finds out you can actually do it as an oral form and then you can just swallow a pill. And that’s much nicer than putting, jamming a needle in your thigh every day. That is, objectively, probably an improvement for many people because it causes the patients to adhere to their treatments. It’s important to have an ongoing conversations and to understand each other and to find compromises for this. Thank you, everyone. That was our first episode with Suryansh and Manya. Since we did not want to episode that goes on too long. We’ve split it into two halves and you’ll get the next episode next week. So we’ll catch you then and stay tuned because we have a lot of interesting topics still to cover. Take care and goodbye. Thanks so much for tuning in today. If you enjoyed this episode of IP Talks, be sure to check out our other episodes and subscribe to the podcast on your favorite platform, whether it’s Apple Podcasts, Spotify, Google Podcasts, or wherever you listen, and don’t forget to follow us for updates and new releases. We really appreciate your support and we’ll catch you in the next one. Bye.

13. 

    1 Oct 2024

    #1 – Patent Litigation in China (Douglas Clark – Season 1 – Episode 1)

    Summary and Time Stamps Insights into China’s Evolving IP Landscape: An Interview with Douglas Clark In the inaugural episode of IP Talks, host Jan-Willem Prügel interviews Douglas Clark, a seasoned solicitor and expert in intellectual property (IP) and technology law. With over 30 years of experience and more than 3000 IP and technology cases, Doug shares insights from his extensive career, which includes working in Hong Kong and Shanghai, and his role as an adjunct professor and published historian. The episode explores Doug’s journey through China’s evolving IP legal landscape, including the historical context, developments in Chinese IP law, patent litigation, and the increasing significance of China in global IP litigation. Listeners gain an understanding of the differences between evidence handling in China and Western jurisdictions, the impacts of ‚decoupling‘ on China’s role in IP, and the importance of strategically drafted arbitration clauses. The episode is rich with stories from Doug’s career, offering unique perspectives on both past and present challenges in IP law. 00:00 Doug 02:51 Introduction and Welcome 03:00 Doug’s Background and Career Journey 03:24 Early IP Law Practice in Hong Kong and China 05:07 Transition to Shanghai and Major Cases 07:54 Academic Pursuits and Publications 14:22 Development of Chinese IP Law 28:07 The Long-Awaited Civil Code in China 29:17 Chinese Attitudes Towards Evidence in Court 31:52 Biggest Developments in IP Law in China 33:11 The Impact of Decoupling on IP Litigation 34:50 The Importance of Arbitration Clauses 36:25 Notable Cases and Investigations Show Notes https://www.jetro.go.jp/ext_images/world/asia/cn/ip/pdf/ip_adr202303_en.pdf (https://www.jetro.go.jp/ext_images/world/asia/cn/ip/pdf/ip_adr202303_en.pdf) (Report on Alternative Dispute Resolution in Hong Kong) https://apnews.com/general-news-99d87da875bc4d58af24d387a7653ba5 (https://apnews.com/general-news-99d87da875bc4d58af24d387a7653ba5) (More on fake investigators) Transcript Disclaimer, the views, opinions, and statements expressed by the hosts and guests on this podcast are entirely their own and do not represent the views of their employers or any affiliated organizations. Additionally, the content shared on this podcast is for informational purposes only. and does not constitute legal advice. For any legal matters, listeners should consult a qualified attorney or legal professional to receive advice tailored to their specific situation. IP Talks is a Jan-Willem Prügel production, all rights reserved. Welcome everybody to the very first episode of IP talks. I’m your host Jan-Willem Prügel. My guest today is Douglas Clark. Douglas is a solicitor and a partner at the Hong Kong firm tenant, a wit. He used to work as a managing partner for a firm called levels that later merged into what is today known as Hogan levels. He’s also been embarrassed her for many years. He’s an experienced arbitration practitioner and has over 30 years of experience and intellectual property and technology law. He has actually handled over 3000 IP and technology cases. Including cases. In front of the court of appeal. In Hong Kong. And the Supreme people’s court in China. Duck seriously, one of the most impressive people I’ve ever met. He’s a great guy and he was gracious enough to spend some quality time and some valuable free time to record this episode. I’ve met Doug at the IP moot at Oxford earlier this year. And already then he’d been very generous with his time. He’s not only a very successful practitioner, but he’s also an adjunct professor at the university of Hong Kong and IP law. And a published historian. He’s written several books and his most famous work is actually the book on patent litigation in China. So we talk a bit about the Chinese patent litigation history. Also some Japanese history. And litigation in general, especially patent litigation. And you’re in for a treat you will hear and listen to a lot of great insights and information. You will learn a lot about the Chinese patent landscape. And it’s truly astounding the breadth and depth of Doug’s knowledge. Now let’s actually hear the man speak. And without further ado. Here’s my interview with Douglas Clark. Welcome to IP Talks, the world’s greatest private podcast on all things intellectual property, starring some of the world’s leading IP practitioners and your host, Jan Willem Prügel. You’re in for a treat. Enjoy. Introduction and Welcome Thank you so much Doug for coming and for taking the time. Hope you’re doing fine today. Yeah, I’m doing very well. Thanks very much. All right. Awesome. Doug’s Background and Career Journey So I wanted to get started right away and maybe if you could tell us a bit about your background and your biography. Because I saw you, you told me some of your biography already, and I saw it on LinkedIn as well. Could you maybe for the listeners, tell us what you’ve been doing and what stations in your career you’ve had. Okay. I guess in terms of intellectual property, obviously. So sure. Yeah. Early IP Law Practice in Hong Kong and China I started practicing IP law in 1993 in Hong Kong. Maybe just go back a little bit before that. So I’d studied in China from 88 to 1990 at a university studied Chinese language and Chinese law which brought me to Hong Kong as a place where I, as a common law lawyer being from Australia was able to qualify as a lawyer, but still also look to do Chinese work. And so I started as a paralegal with a firm that’s now Hogan Lovells. It was a Lovells side of that. And then did my training contract in Hong Kong and started practicing there as a solicitor doing both Hong Kong IP litigation. And IP enforcement in China, which at that time was pretty much just rating factories for trademark infringement, maybe unfair competition. And in Hong Kong, then we were incredibly busy with IP litigation because China was just opening up and still about 80 percent of China’s exports came through Hong Kong, meaning about 80 percent of the exports of infringing products came from Hong Kong. So we were doing a lot of litigation against people who were effectively manufacturing in China, shipping out. Through Hong Kong. That included a lot of Anton Pillar orders. I’m not sure if you’re familiar with those, but So it’s Caesar orders where the lawyers go in and seize products. Yeah. Oh, yeah. Yeah Combined with raiding factories in China, that was all very good. So I did that through to about 2000 based in Hong Kong. But already by the end of the 1990s, you had people asking you you’re not based in mainland China, are you? You’re based in Hong Kong. Why are we talking to you about Chinese stuff? I agreed with a Chinese lawyer I’d been working with for quite a number of years to be seconded to a firm he would establish in Shanghai. Transition to Shanghai and Major Cases And so I moved up to Shanghai in 2000 with my then very young family of three kids and my wife. And we and I worked with that Chinese lawyer for three years based in Shanghai. I was still with Lovells. I just seconded into that. I became a partner in Lovells during that period of time. And then in 90, 2003 Lovell’s got its license to open office in Shanghai and I became the managing partner of that office and then did a lot of more IP work in China and we graduated from doing raids, which is using administrative authorities or the police, very rarely the police, but occasionally the police do doing a lot more litigation. in the Chinese courts because the litigation system was getting better and better. And so with that I did some very big patent cases acted in probably the first SCP case in China. Qualcomm sued Nokia in a number of courts in China over various patents. There might’ve been an early one. I’m not sure. I’m not aware of it. So that was big, of course it didn’t get to a trial because Qualcomm and Nokia eventually settled. Some other quite big patent litigation some very large anti counterfeiting cases. One, one case where we found the investigation agency was actually also engaged in making the counterfeits. So they had a totally vertical and horizontally degraded business. They could they could raid their customers and make money off that, and they could also sell to people and not raid them and make money off that. I went to the Beijing High People’s Court on a case there. Copyright infringement, basically the Chinese IP system got more and more sophisticated over that period of time. In 2010, by 2010 though I was a little bit tired of just being a manager because I was managing a very big office by then we had 80 people in a level Shanghai office, about 40 lawyers, about half of those doing IP and I’d always wanted to be a barrister. For those not from the European English system that’s the sort of lawyers who go to court in the wigs and gowns you see occasionally. So I qualified, re qualified as a barrister in Hong Kong and then practiced doing that for nine years until, and did a lot of IP litigation in Hong Kong. I also did some work with some clients doing Chinese litigation as an advisor and working with Chinese law firms. And then in 2020, I joined the IP firm Rouse as their global advisor. resolution. I did that for for almost three years before going into my own firm. And now with a, I merged that firm into another bigger firm called Tana DeWitt, where I’m doing IP litigation and arbitration involving both China and Hong Kong. That’s amazing. There are so many points where that are interesting that I would like to dig down a bit. Academic Pursuits and Publications But before we come to that, I also believe you are also a professor and a historian as well. Is that correct? I’ve been an adjunct professor at Hong Kong University Hong Kong University since 2016 where I’ve been teaching IP law, Hong Kong IP law. But also my, my, probably my proudest thing is I’ve written a very long book on extraterritoriality in China and Japan, which is about the history of the British and American courts that operated there. From 1843 to 1943 a period when foreign, most foreigners were not subject to Chinese law. And so every foreign country had courts in China. In most cases, they were consular courts, meaning consular officials sat as the judges. That’s the case for Germany and and actually all European countries. But the British first, and then the Americans actually set up formal courts in China. China the British Supreme Court for China and Japan at the time when originally because it covered Japan and the American United States Court for China. So I wrote a history of those, so that, and of course that’s a history of the Western engagement with China since the Opium Wars. So that was probably the biggest proudest piece of work I’ve done. I’ve also written a few IP books. I wrote a book on patent litigation in China. I’m about to do a third edition of that and I have a book on it or in China as well. I’ve read on your LinkedIn page that somebody wrote, he wrote the book on patent litigation in China. So that’s the one. I assume That, that’s the one called patent litigation in China. It was very useful once, ‚cause I was giving ex, I gave some expert evidence, some US proceedings on patent litigation. And the party on the other side said Mr. Clark’s a foreigner, how can he possibly be an expert on Chinese patent law? And the judge had a copy of my book, said he’s written a book on it so I, oh. He probably knows something about it. So yeah, that was that was on the transcript was quite nice. I see that. That’s amazing. And you also, you’re, so you’re obviously fluent in Chinese and Japanese I believe as well. So I studied up high school in Japan. I left that out of my book. Before going to China, I’d done a year at high school in Japan and also back there for a half a year working when I was 18, teaching English and traveling around and my wife’s Japanese. So I speak with her in Japanese. So that’s where the Japanese comes from. So you said you’re Australian, is it very common? Or was it very common in that period to move over to China for work reasons? Japan, the Japanese was very common. And that’s why I ended up speaking Japanese already in the 80s, Australia, Japan were the largest trading partners between each of them. China, Japan buying natural resources from Australia. Australians importing a lot of things from Japan despite World War II, very deep relationships. And by the time I was in my teens there was numerous scholarships offered to go to study in Japan and many of my friends and many people did But after I studied in Japan, I was at university and China, I had to actually travel through China in, when I was 18 and I saw some scholarships being offered to go and study in China. I thought I had no real chance to get them because I thought that it would be for postgraduates. But I happened to know someone who had one of those scholarships that are actually, they’re looking not only for people who to. want to study Tang Dynasty poetry, all that sort of interesting stuff about Chinese history, but who want to do business later on. So if you apply and focus on the fact that later on you want to use your, any language skills you require for business, you should get one. So I got a two year government scholarship to go and study from the Chinese and the Australian governments to study in China for two years. And that’s how I ended up in China. Very rare though, to answer your question, most people said, what the hell are you going to China for? There’s no business there, there’s nothing there, it’s a backward country, why would you be going? Yeah. That’s amazing. And where did because obviously being a managing partner at a major firm is not something that leaves you a lot of free time. So how did you, first of all, how did you manage that? And also how did you come about, how did it come about that you became in the history and were able to write a book on it even? Okay. So yeah, so I didn’t have the time to write the book when I was at a managing partner level. I did write my patent litigation book, but to be fair to those who worked for me at the time, I was able to take a lot of their research notes they’d done and et cetera and put them in there. Not to say I didn’t do a lot of work, but there was a foundation that was helped and some paralegals helped put it together. Although it was actually finished off in my last few months with levels when I was winding down and had a little bit more time. I see the history book came about simply I studied at university. I studied Asian studies and law, Chinese and Japanese history. And so I’d actually discovered these courts exist. I knew they existed, but I discovered specifically they existed in my gap. I was becoming a barrister. And I wasn’t particularly busy because I had to go back and be a pupil. I thought, okay, I’ll write, I’d write a here’s a great chance for me to study a bit of history, write a book. And so in about, A one month period when I really wasn’t busy at all because of various times, timing it took to re qualify. I wrote about 50, 000 words in research and stuff. Just, if you just sit down, of course as you said, I’ve been a busy lawyer, so writing wasn’t a problem. I just sat down and wrote it. Of course, I sent it to a publisher, I found a publisher, I sent to him, he said, Yeah, it needs a bit of work, very politely. So we did a lot more work. It took me four years at the end, but it came out at about 288, 000 words which is a huge, to people who haven’t written scholarly articles, any, anything in the four digits is already quite a bit of work because it requires thinking and every word sometimes comes hard. So 288, 000, you said that is quite an oeuvre. It was big. It’s scholarly, but I have to say, to be fair, it is meant to be a history. So I’m trying to, I go through the cases and the individuals and things. And I let the story tell itself through the transcripts and what people said in the courtrooms, because all these transcripts were published. I found them also in various there’s a lot more of storytelling in there than just pure scholarly work. So you’re right, because a real scholarly work, every word is grueling and tough. So I enjoyed writing this a lot more than I read my, my, my legal books, because I didn’t have to worry about whether each word was perfect, as long as the story was. Amazing. I will I will add links to your books in the show notes and so people can then check it out if they want to read about great Japanese and Chinese legal history or history in general. Development of Chinese IP Law And that also leads us to our main topic because we wanted to talk about the development of the Chinese IP law within the last 30 years. And in order to fully understand this, it might be helpful to know some background of the Chinese history of that era or before, right before the 30 years began the last 30 years for people to understand really where the developments come from. And so could you maybe set the stage for us for the development of the IP? Okay. Yeah. So I think we’ll just go. Even a little bit further back. We’ll go back to the Qing dynasty, which is the last sort of imperial dynasty, which is actually not Chinese run. It was run by Manchus, who are from where’s what’s now Manchuria, Northwest China. I guess they are considered Chinese now, but they were considered a foreign dynasty with foreign language. And they were running China for 300 years up to 1900 towards the end of their dynasty. They were weak, but. The legal system they had was had no civil law, effectively. Law was all based on a criminal code. And all the government really did was keep people in line. There was no intellectual property rights, so to speak, or anything like that. So in 1911, there was what was called the Xinhai Revolution the Guomindang. Actually a little bit later the Guomindang, but there was a new legal system introduced with that eventually by the Guomindang who moved to Taiwan. That did include some IP laws and actually civil codes and various other things. But then there was a communist revolution after World War II the communists started fighting the Guomindang just before World War II, and they abolished all law. And skipping over a few things, probably most important for this story is there was the Cultural Revolution between 1966 and 1976, where the communists also basically abolished all laws. There was only six actual laws in force in that period, and no, no civil code, no, no contract law. It was all basically a criminal law, marriage law, and a couple other things as control. So does that mean, sorry to interrupt, does that mean basically the ruling party was just deciding on a case to case basis what to do without too much written law? Pretty much pretty arbitrary. It was a pure comp. Part of the reason you didn’t need civil laws is everything was state run. And so when you’re dealing with problems between state run companies you don’t need civil law to deal with those disputes, the bosses just decide which way it is. Okay. You couldn’t supply. It was part of the plan. You can supply this. There’s no real need for litigation. There’s no need for a trademark or a copyright because you’re just selling according to the plan. So there was really no. No law to deal with civil relationships because it was everything was according to the plan. You did need some criminal laws because people did still commit crimes and they were punished according to that. You need a law to govern marriage because people were still getting married and I think divorced. I think there was some divorce allowed, but it was pretty. So you had a relatively lawless state, particularly in terms of contracts, civil law, meaning that in 1978, Deng Xiaoping, after the Cultural Revolution finished, announced a period of reform and opening. And that included developing all the things that we need for civil law. A contract law. Civil Code came much later. The contract law first trademark law was 1983. Patent law was 1984. It only came into force in 1988. Copyright law was actually, there was a bit of copyright before then, but because it was authors were getting recognition for their work, almost a sort of Copyrighted. Copyrighted. Continental thing of author protection rather than copyright in the deeper sense. Unfair competition law came in 1993. I did one of the first cases literally on the unfair competition law. Cause it came into force, I think in 2000 and 19, sorry, 1994. And we applied the day it came into force to do a administrative case, not a civil case, but an administrative case. So I assume there was no case law. There was no, no guidelines, no practice or anything. So it was this is actually automo, it’s quite funny, is automotive oil and the other, the guys had basically take, not use the trademark. We used the same get up but, and there was a guy riding a motorcycle on it and they’d reversed the motorcycle guy. So one of the arguments we had with the officials was say, oh, you can tell the difference, the motorcycle’s facing the other way said no, that’s not the way the law works. Anyhow, they eventually agreed to do a raid and we got some oil seized. And so no, no real court system. The initial judges in the court, they did establish a new court system, but no one, not many people have legal training. So initially most judges were actually demobilized officers from the army. And that I used to think was a bit weird, but in hindsight, I thought it makes a lot of sense because you had officers who’ve been demobilized. The army still had respect in society. They had some education. And it was a good way to, to get some initial respect for the legal system. But then over time, and through the nineties, I only did one or two cases in the civil courts. All the Chinese lawyers, everyone I worked with said, we don’t want to go to court. It’s a nightmare there. So almost all enforcement was administrative, going to administrative bodies, raiding factories, seizing things. Clients loved it. They love raids. All clients love raids. You go in and say, We seized 10, 000 items yeah, that’s the way we want to do it. Over time, they realized it was becoming ineffective. And from about 2000 onwards, when I moved to Shanghai, we started doing more civil litigation. Sorry, can you briefly tell us why it became less effective? Basically, because people get, once you’ve raided someone and seized 10, 000 items next time around, they’re clever enough not to keep it in their warehouse in the factory. They don’t deal with people they don’t know. They ship out, they ship just in time, they’re manufactured just in time. No one keeps stock. And you also, you hit all the low hanging fruit, people who don’t really know they’re infringed. To be fair, a Minister of Action is partly educated. And by doing it, they’ll go in, they’ll see some stuff, find the people. Some people would stop. They literally would. Okay, I didn’t know I was breaking the law. Now I do, I’ll do something else. And so you’re just pushing into a world of those who are actively infringing and they set up their business structure to make it much harder for you to catch them. And secondly, the fines were becoming less of a deterrent, the cost of doing business. So civil action had the benefit of trying to recover damages that could actually impact on people. Didn’t work so much in the early 2000s, the damages weren’t so high, but it was a start. Clients also tried to push criminal action, and we did do a number of criminal cases. But getting the police to take action was very hard. In China, they treat Again, they said, we’ve got the minister of action, which is more educative. It’s actually very hard to get someone convicted of criminal offense in China despite what people may think and it took the IP, it was very hard business for us, we did do some criminal cases, but because we couldn’t get so many criminal cases done, civil became the choice. Also, we started seeing patent infringement, which is only civil. design infringement, which is civil, or you actually could do administrative, but it was getting more and more difficult because if you have to decide validity and infringement. So we started doing a lot of litigation and the courts got better and better. And just sorry, just a brief introduction. And I believe the Chinese system is also bifurcated, like for example, Germany, right. Actually, it’s very interesting for your German listeners. I’ll find it interesting that pretty much adopted the. German system, so a bifurcated system where patents decided by the patent review board with appeals to the courts infringement is decided by the courts and then you get questions about whether to stay actions or whether to proceed and timing. And so was that deliberate deliberate copying or did it, did they just happen to co evolve basically? No, it was deliberate copying. The Chinese, Traditionally, even back with the Guomindang and the earlier views, the German legal system, just like Japan, sorry, it goes a little bit more circular. Because the Japanese adopted a lot of their laws from Germany, China did look to Japan as a model, and so they adopted a lot of their laws from Japan. And so there’s always been a lot of looking to Germany. And Japan also has a bifurcated system. I can’t tell you if the bifurcation came directly from following the German system or looking at the Japanese system. I know they certainly studied patent laws from around the world. I would also suspect another good reason for bifurcation in China was with a very underdeveloped legal system and court system. You didn’t want to leave the decision on validity of patents with courts from around the country. Have it in one centralized body. It’s going to have the expertise. It’s going to be able to determine that. Probably the reason that you created a bifurcated system in Germany originally, also keeping it with one body for one area of expertise. Has a lot of good advantages, because it has the disadvantages. You’re very familiar with that. Then you have to run to actions by injunction gap. Also, yeah, and all those issues. But there is a good theoretical ground for doing that. And that remains to the system to date in China, although there is a little bit of a change. I’ll leap ahead and then we’ll come back because they now have a Yeah. I. P. Tribunal of the Supreme Court that heals final appeals on all patent cases. Your patent appeals and infringement appeals end up in the same court. And they have in recent years decided to hear some of those appeals together to avoid the problem. Bifurcation, particularly because I know in Germany, you don’t have it to particularly. So squeeze arguments can be relevant. Squeeze and being that if you say it’s valid for this reason, it’s not going to infringe this reason. Those which my understanding in Germany also, sometimes you get. Decisions that are actually contradictory because the patents are valid. You have that sometimes, yes. Yes. And you get that, you got that in China. I had cases like that in China. The new Supreme Court IP trying rules is reducing that problem. I see. When was that change enacted? Was it recently or? So what happened is after I left living in. Mainland China still doing cases. In 2014, they set up IP courts in Beijing, Shanghai, Guangdong, and a few other places. They’d already had IP tribunals in other courts, but these are specialist IP courts. They were first instance trial courts. And appellate courts from lower cases. That was the first great innovation in China, something people have been advocating for a long time. But the big game changer is, I think 2016 or 17, I have to check the years could be 18. They decided to set up this IP tribunal. As part of the Supreme People’s Court and all appeals on patent and technical cases. So technical copyright software and unfair competition, SCP, such cases, things like that all go to this IP tribunal. And it’s been very successful. It’s been it’s achieving the goals, which were number one to reduce. inconsistent decisions around the country in terms of patents and technical issues, but also reduces any opportunity for corruption or local influence because everything’s going to a central tribunal. Doesn’t mean it can’t happen, but it’s much, much harder. So this has been a great improvement in the patent system in China, IP enforcement system in China. It’s been so successful though, they’ve actually had to kick out some of the. Other appeals, they were healing for example, trademark cases, because they got so busy, they’ve actually rechanged their rules to limit some of the appeals. Fantastic. So that would be one point. I was wondering when Chinese IP courts decide, do they for example, on validity or on certain patents that also exist in other jurisdictions, European and Western jurisdictions, for example, do they look at what other courts have decided, or do they take any inspiration or are they more like maybe UK or German courts where they’re very confident of their own abilities and they don’t really care what would others think? I think that now they’re more like the Germany, UK courts. They are, they have very specialist tribunals now, the pan review board. That doesn’t mean they ignore decisions from other jurisdictions. I think you can say the same about the UK and German courts. They don’t ignore them but they’re going to decide them on their own merits under their own law. Don’t forget the law is also slightly different in China. Sorry, the law. It was all basically the same because the treaties, gap trips and things like that. But for example, in China, sufficiency is often a ground for invalidity, which is relatively rare. In Europe and America. Whereas in China, particularly in so far chemical and pharmaceutical patents, sufficiency has been a big problem, a lot more combination of common general knowledge than in some other places. That doesn’t mean they won’t look at it, they’ve got their own sophisticated system now, and it is very sophisticated and, the decisions are better and better. I see. And so the Chinese system then is, as you said, if they took inspiration from Japan, so that it’s also a civil law system, mostly. It is. And probably the biggest difficult big, the biggest difference would say Japan and Germany in civil law system is they, for a long time, didn’t have a civil code. Because there’s a number of reasons for that, but the principal underlying reason was China is still a socialist country. You have state planning and state enterprises and a civil code governs relations in what is theoretically a free market. I see. If you go down to the underlying. And so they had some trouble drafting civil code to get that in. I can tell you this is a true story. When I was studying in China in 1889 we was, there was, they had passed what was called the General Principles of Civil Law. So it was a basic, like a code, but it’s only very short. The Long-Awaited Civil Code in China And the lecturist said, Oh, this is just a stopgap measure. We’ll have the civil code in three years time throughout the two thousands, whenever I interviewed any new graduate, I’d say how long till we get the civil code? And they said, Oh, another three years time. Anyhow, we finally got it in 2000. And. 19 or 20. It was anyhow, it came into force. And so the civil code is that the general principles of civil law have actually been included as part of the civil code and various other things. But that’s the only code that is actually enforced in China. There’s no criminal code, there’s no commercial code, there’s no other code. So despite being civil law it’s not codified like you find say in Germany or Japan. Except now for civil law, which has been, but that’s the civil code, which is very recent. So it’s been more, I’m told it’s a little bit like Denmark. I’ve been told that doesn’t necessarily, doesn’t have codes, but has laws in a civil sort of principle. And I think they are working on a criminal code, but it’s it’s a little bit high British. And even through the reform process, they’ve certainly, and even for patent law, they’ve certainly looked at what has been done in common law jurisdictions for determining how to develop the law as well. Chinese Attitudes Towards Evidence in Court Since a lot of practitioners will be listening to this do you have any experience what Chinese clients often find surprising about European or maybe other jurisdictions that they don’t expect and where you sometimes have to counsel them to be wary of this or be cognizant of? Yeah, probably the biggest thing is the biggest one is the Chinese. attitude towards evidence. And so in the Chinese courts the person asserting a fact, which is usually the plaintiff, but it can be the defendant sometimes, has the burden of proof to produce the evidence. And until recently, there’s been very, strict rules on that. You have to get a notary to purchase, confirm a purchase, download things from the internet, a notary has to confirm those. The courts took no role in investigating or accepting the validity of evidence and that remains to this day. And so if the plaintiff did not have the evidence, very often the court would just find against them on the basis they hadn’t established a case. Now, I know because I was actually in a court case, watching a court case in Germany. Germany takes a very low level of. Standard of proof. And I remember in this case, I was involved a sale of a a medical product and the only evidence in the case of the sale was a lawyer from my old firm had called up a doctor who said, yes, we have that here. And that was enough to shift the burden to the defendant to say no, that the hospital’s never dealt with it, but they didn’t say that. So the court accepts the product has been sold unimaginable in in China, even in common law jurisdiction would still need a little bit more than just purely a call to a doctor. So that means Chinese parties, when they come outside Germany arbitration, cause I do a lot of arbitration now as well. They really The first time, I find it very difficult to understand that why they should produce evidence and documents. And they say, yeah, but we’re giving away, we’re giving away the evidence. Yeah, but I’m to explain that you have to, because if you don’t and you can’t give an explanation, the tribunal will just fight against you. Yeah. Or the court. It’s not about playing games. You’ve got to actually come out and say, this is my evidence or produce as much as you really produce a lot. And if there’s some small points missing, you may be able to deal with that, but you can’t just expect to not be able to produce evidence. And that’s probably both as an advisor acting for and against and seeing as an arbitrator, the biggest problem I’ve seen. In terms of the Chinese parties that they really get caught up by the fact that other jurisdictions deal with evidence in, in, in totally different ways. I see. That’s very helpful. Biggest Developments in IP Law in China What do you think are the biggest developments in IP law in China in the next few years? Okay. Coming. That’s very interesting because obviously the Supreme Court IP trial was the biggest by far before. Yeah. I think the one we’re seeing it already SCP fran rates are going to be more and more determined by the Chinese courts. You wrote extensively on SCPs as well, right? That’s also one of your specialties. Correct, correct. I’m getting less specialized now because it keeps on moving so fast. But and it’s become two jurisdictions, principally it’s UK and China. Now, maybe a little, not even America. Oh, sorry. And India. So India is catching up fast. And so you’re going to have three, basically, it’s going to be China versus India for SCP Fran rate setting. UK is going to drop off as being less and less important because Who cares about an injunction in the UK? Sorry to my UK friends, but at the end of the day, whereas Chinese companies care very deeply about an injunction in India. And the Indian courts don’t like the idea of China saying, we can determine what happens in India. They’re equal population equal penetration of mobile phones and other technology. But the Chinese courts are a little bit ahead of the game. And some of the rates they’re setting are not as unreasonable as people thought. And that will continue because Chinese companies are becoming license laws as well, and not just licensees. So it’s not just a pressure for lower rates. That’s number one. The Impact of Decoupling on IP Litigation The other thing is strangely, other than ss China is losing its importance as a center for IP litigation in other areas. ‚cause of decoupling. and people moving. So decoupling, if those aren’t familiar with the term we use a lot out here in Asia is companies, a lot of people invested a lot of money and in manufacturing in China, decoupling is the exit from China, moving to other places. Taking manufacturing home because, it’s got expensive in China and also most factories now are basically robot driven. So it doesn’t really matter. So European companies have gone home to Europe, maybe not to Germany, but to Hungary and other slightly cheaper places. Americans are taking things home. Japanese are moving a lot home because it’s just much easier or to Vietnam or Cambodia or somewhere else. So the importance of China to global supply chains is dropping off. The true benefit of sue say suing someone in China, because you’re going to close off a supply chain or cause a real problem is dropping. You can still go after Chinese exporters and that’s going to be an area of importance and Chinese market, but I think it’s What I had predicted to be a very global role in IP litigation is going to become less important. Still going to be important because it’s just such a big market. But decoupling is changing the nature of what we see going on in China and will go on for a long time. Fascinating. Fascinating. Thank you so much. So these were all the questions I had prepared. Is there anything you would like to talk about or let the viewers know that you find interesting or important to say? The Importance of Arbitration Clauses Yeah, I think one of the, one of the things I think key for trying to, cause I’ve been Doing a lot more arbitration involving Chinese parties recently, both as an arbitrator and as counsel. And really think about your arbitration clauses is probably a good way to close if you are doing a license agreement. People really don’t think about it. I have, and I’ll give you a link to it, I have drafted a report on this for Japanese external trade organization when I was at Rouse, I give a lot of suggestions for arbitration clauses, I’m not going to promote anything specifically here now but people get themselves in trouble, On both sides, the Chinese and Westerners by not thinking about their institution, not thinking about language of proceedings, not thinking about what they want to actually arbitrate. And so I strongly recommend really people think about that there is going to be particularly with decoupling more arbitration. And also just looking at arbitration for a method of disposing of worldwide disputes can be useful. It’s not useful in every area. For example, in the SCP space, no one really arbitrates now because it was just found to be too complex and difficult. Much easier to pick on one or two patterns and sue on those. But there are other areas where If you’ve got a multi jurisdictional dispute, I think you could get some Chinese parties even being willing to agree to submit to an arbitration as long as the proposed clause is there. That’s probably one area where there will be growth. And even people agreeing to arbitrate, even though they haven’t, hasn’t been part of an original agreement. Wonderful. So since we do have a few more, if you have a few more minutes, I had one more question. Notable Cases and Investigations So you mentioned earlier that the case where there was an anti piracy case where the agency was involved as well. That sounds really interesting. Could you, if you’re allowed to, or if you can elaborate. No, it’s all public. I’ll send you a link right now. C-U-I-P-P-C-I. I’ll tell you Reuters did a complete exposure on it. You were involved in that litigation. I was running it. Running yeah, okay. We’re acting for ABB. They came to us yeah, so we actually, it was an amazing case. And this goes to the evidence point. We got these guys, We’re doing raids. Our clients got suspicious. They’ve been using them for years. They got suspicious because that’s right. And legal counsel changed. The one legal counsel been using the same people all the time. A new legal counsel came. He got contact by a different investigation firm. Hey, there’s this factory making fakes. So I read it. It’s yeah, I’ll go ahead. Raids it, the investigator gets beaten up. And then they hear rumors that this is actually because it’s connected and beaten up and put in hospital, not just beaten up. And so when was this? This is back in 2009 and 10. Wow. It’s a Ray BB. And so they get me in. We get some investigations going. We managed to through the undercover investigations, get through to the employee in Dubai, who is meant to be both investigating for them in Dubai and finding fakes, but she’s also selling the counterfeits. We get her on videotape doing that admitting that she’s both selling fakes and investigating. We got her arrested in, in Dubai. She was fine, but she was convicted because we were really looking, we need a rock solid evidence of the involvement. But then even for China, that wasn’t quite enough. This is the evidence point we’re talking about. We had the private investigator finally get to a meeting with the deputy chairman, hand him over some Products, I need them made like this. And we had secret markings on them so that we could tell, we got those back in the shipment. And so then we sued. And this goes to our point about evidence anywhere else in the world, that would have been enough to say, you guys knew what was going on. Unless you come and give evidence. They gave no evidence. They admitted the liability of their of the investigator. Cause they had to, they said rogue employee. We didn’t know it. We had no idea we’re shocked as you are. So they eventually in the Chinese courts, one and, found not liable but it destroyed their reputation, their name. Amazing. So maybe so what, was that the favorite, your most favorite case that you ever did? Ah, it’s one of the big ones. We didn’t win, so it’s not so favorite. No, I’ve done a lot of cases like that. I wouldn’t say it’s my favorite, but we’ve done quite a lot of cases like that. I’ve done some I’ve done another pharmaceutical case where the factory was run by a delegate to the National People’s Congress, meaning it had serious influence. And we had to again use the investigator. Oh, you do a podcast with my friend who’s the investigator. Yeah. Oh, yeah. You like? Sure. You love to talk about a guy called Ted Kavoris. I’ll send you his link. He’s already online. Yeah. He’s in a number of couple of videos already with hidden videos and stuff. He loves to talk about it. And so we did a number of cases like that where his best thing was he was willing to put down serious amounts of money to 20, 20, 000, 30, 000 US dollars without even the client putting up front. Yeah. Just to get the evidence. Clients always pay at the end, because once you got it, okay. But yes, people just wouldn’t, you buy a container. People, if you come in and say, I need a couple of samples, people won’t give it to you. But you come in and buy a container, they’re like, yeah, okay, guy’s serious now. No one buys a container. For pharmaceutical products? The pharmaceuticals, we didn’t have to buy a container, but he did buy a 000. Wow. Okay. And because it was a kilogram of white powder, got the factory to give a specific statement, sealed and shopped, that this was manufactured by them as a pharmaceutical for sale, and that’s what we needed. I see. You wouldn’t have got that for a small sample. Is currently, so it’s quite difficult in Germany to get to be able to raid factories because the burden is very high. So what’s the current status on that in China? Is that very difficult or more easy? Actually, raiding factories is the easy thing. I was getting cash from the acts because the way it works is because they’re all industrial premises, the body that in raids, the market supervision authority has a right to inspect them at any time. So they don’t need a warrant or anything like that. So we’ll often just going in on the inspection and then there’s nothing wrong with that. They’re allowed to inspect and then if they find counterfeits for other things, then they can seize them. So then they it’s actually relatively easy, but it’s still a matter of they don’t want to waste their time. So you need to investigate and convince them that there’s going to be stock. I see. Interesting. All right. So thank you so much for your time. Any, anything else or is that before I just now it’s lost. Yeah. It’s probably enough for your podcast. Sure. We can always do another round sometime. I’m sure you have. Tons to stories to tell, but it was super interesting and I will link in the show notes, everything that we’ve talked about and also your books anything else you might want the viewers to view. Okay. Excellent. That’s great. Awesome. Thank you so much for your time, Doug. Just send me the email address for me to send you some other stuff and some other links. Awesome. Will do. Then have a great Sunday. And, you too. Or Sunday is almost over, but I’ll have a good week. Oh yeah. And have a good week. Have a good next week. Yeah. Okay. Thank you. Okay. Bye bye.   Thanks so much for tuning in today. 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