CENTRE FOR INTERNATIONAL
TRADE AND ECONOMIC LAWS (CITEL)
PUBLIC LECTURE
Thursday, 16 April 2015, 2:00 pm – 3:00 pm
T1 Conference Room, Ist Floor
O.P. Jindal Global University
Sonipat Narela Road, Sonipat- 131001, Haryana (NCR of Delhi)
“Some F/RANDom Thoughts on Standard-essential Patents Litigation in India”
SPEAKER
Yogesh Pai
Assistant Professor
National Law University, Delhi
Yogesh Pai specialises in intellectual property law and has interdisciplinary research interests in technology, economics and policy. His
teaching and general research involve intellectual property law, competition law and international trade law. Before joining NLU, Delhi,
Yogesh was coordinator of the Ministry of Human Resource Development Chair on intellectual property rights (IPR) at NLU, Jodhpur. He
was also the faculty-in-charge of Trade Law and Development, rated as one of the top ten journals in international trade worldwide. He has
worked with the South Centre, Geneva, Centad, New Delhi, and has also taught as guest faculty at the Indian Law Institute, New Delhi. In
2012, Yogesh was short-term Asian Law Centre Visiting Scholar at the School of Law, University of Washington and was selected to attend
the WIPO-WTO Colloquium for Teachers of Intellectual Property in Geneva. Yogesh has been a speaker on intellectual property issues in
India and abroad. He has published in national and international journals/periodicals as well as in reputed newspapers in India.
In 2013, Yogesh was nominated as a legal member in a committee constituted by the Ministry of Health, Government of India, for invoking
provisions of compulsory licensing under the Patents Act, 1970, in the context of affordable healthcare. Yogesh was also the member of an
expert committee constituted by the Ministry of Commerce to study the need for utility models in India. Currently, he is engaged in a
project sponsored by the Fridtjof Nansen Institute, Norway along with SAWTEE on plant genetic resources. He is also working on a
project sponsored by the United Kingdom Intellectual Property Office to provide legal training to Indian patent examiners. He is on the
peer-review committees of International Review of Intellectual Property and Competition law (Max Planck Institute for Innovation and
Competition) and Journal of IPR (National Institute of Science Communication and Information Resources). He is a member of the
Society of International Economic Law. Yogesh is currently pursuing a doctorate examining the effects of standard-essential patents on
trade and competition. He is also interested in reforms in Indian legal education.
Abstract
Recent months have witnessed an explosion in litigation around standard-essential patents (SEPs) in India. SEPs, a term not intrinsic
to patent art, now occupy centre-stage owing to immense public policy implications at the intersection of intellectual property,
regulation and competition. Standard-setting organisations (SSOs) routinely set technical standards that incorporate technologies
protected by patents (such as WIFI, 3G, 4G etc). These standards are implemented by product manufacturers across the globe. Hence,
SEPs are technologies that have no non-infringing alternatives. While patent holders have an interest in maximising revenues by way
of higher/discriminatory royalties or other licensing terms for their SEPs, manufacturers implementing such technical standards face
royalty-stacking and higher switchover costs due to lock-in and network effects. Owing to a possibility of opportunistic behaviour
involving SEPs - primarily “patent holdups,” SSOs demand voluntary contractual commitments from patent holders by way of FRAND
(Fair, Reasonable and Non-Discriminatory) licensing terms.
Most disagreements over FRAND that relate to fixing of royalties end up as infringement actions against SEPs implementers. SEPs
litigation in India and abroad highlights three distinct legal controversies: a. Whether or not the patentee is entitled to injunctive relief
for infringement involving FRAND encumbered patents? b. What is FRAND royalty and how is it calculated? c. Whether opportunistic
behaviour by patent holders violates competition law? While there is emerging consensus among different jurisdictions concerning the
nature and complexity of the underlying issues, decisions of courts and other authorities are far from reaching coherence and
conclusiveness. The presentation will critically deal with the aforementioned questions by looking into the ongoing litigation/decisions
in India in the light of emerging comparative jurisprudence and scholarly arguments.
Faculty Coordinator: Professor Pallavi Kishore, Associate Professor, JGLS, [email protected]
Jindal School of
Liberal Arts & Humanities
India's First Transnational Humanities School
www.jgu.edu.in