INTRODUCTION Contributed by: Andreas von Falck, Hogan Lovells International LLP
unfair competition cases against generic com- panies before the antitrust authorities seeking injunctions and penalties against the generics. Those originators’ efforts turned were often suc- cessful in 2024 resulting in injunctions and high penalties (up to over EUR9 million) imposed on Russian generic businesses. The granting of compulsory licences remains a matter that requires monitoring in EAEU coun- tries. Compulsory licences have been sought before the courts due to patent non-use or insufficient patent use or based on rights to dependent patents. In Belarus and Russia, com- pulsory licences are also available via govern- ment authorities. Compulsory licences granted by governments remain an exception. Constant monitoring of the Eurasian and national patent applications in the EAEU countries remains a must, as such a precaution may substantially help in shielding originators from potential com- pulsory licence grants (eg, by proceeding with a patent invalidity claim against “dependent” patents filed by generics businesses as soon as the relevant patent application is granted). It remains equally important to proactively react to requests from generics companies for licences since originator silence only enhances a generic producer’s chance of obtaining a compulsory licence. Asia Japan In Japan, the courts have continued to become increasingly pro-patentee. Although at the time of writing (February 2025) there does not yet appear to be any update on the IP High Court’s statistics released in June 2023, which high- lighted that there was a 30% success rate for patentees in patent infringement cases decided between 2014 and 2022, and 35 cases in the same period in which the patentee received over
JPY100 million (around USD 700,000) in dam- ages), it appears that patentees have continued to be generally successful before the Japanese courts in 2024. Before the Japan Patent Office (JPO), recent data show the number of oppositions to pat- ents increasing from 1,260 cases in 2021 to a record 1,411 cases in 2023 (data from 2024 not available at the time of writing). Interestingly, the number of requests for invalidation trials contin- ues to decrease, from 106 in 2021 to 84 in 2023 (data from 2024 not available at the time of writ - ing). The popularity of oppositions rather than invalidation trials likely reflects the relative cost- effectiveness and anonymity of oppositions, although there is an important time constraint to be aware of: oppositions must be filed within six months of the date of publication of the pat- ent being opposed. In 2024, the Japanese government appears to have started to consider the impact of digital transformation in the light of the 2023 decision of the Special Division of the IP High Court that explored the principle of territoriality (case No 2022 (ne) 10046). In that 2023 decision, the IP High Court held that the act of creating a general client/server system can amount to “produc- tion” in Japan (ie, as used in Article 2(3)(i) of the Japan Patent Act) – even where the server and the operator are outside of Japan – provided that certain conditions are met and pursuant to a so- called “comprehensive consideration theory”. In this context, according to the JPO, the Japanese government is contemplating a revision of the applicable patent law that would permit patents that claim a system to be enforced against an infringer’s system even if part of the infringer’s system (such as a server) is physically outside of Japan. The issue in the underlying case related to an online computer program hosted on serv-
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